Action for trademark infringement may not be dismissed on the basis of a not yet upheld counterclaim for a declaration of invalidity

Print this page 24-10-2017
IPPT20171019, CJEU, Raimund v Aigner

Article 99 (1) of Regulation No 207/2009 must be interpreted as meaning that an action for trademark infringement may not be dismissed on the basis of an absolute ground for invalidity, without that counterclaim for a declaration of invalidity being upheld. When the decision of the counterclaim for a declaration of invalidity has not become final, the provisions of regulation No 207/2009 do not stand in the way of an EU trade mark court dismissing an action for infringement within the meaning of article 96 a of that regulation on the basis of an absolute ground for invalidity.

 

TRADE MARK LAW - LITIGATION

 

Applicant is the proprietor of the EU word mark ‘Baucherlwärmer’ since May 17th 2005 (with ‘priority’). The trade mark is used for a herbal base to be added to alcohol since approximately the year 2000. The defendant too sells a herbal mixture for adding to high-proof alcohol, under the name ‘Baucherlwärmer’. Applicant brought an action for infringement of his EU trade mark, so the defendant would be prohibited from using the sign ‘Baucherlwärmer’ for goods and services in the classes covered by that mark. The defendant brought a counterclaim for a declaration of invalidity of that mark - claiming that applicant had obtained that mark improperly and in bad faith -  before the same court. The action for infringement was dismissed in first instance on the ground that the applicant had obtained that in mark in bad faith, although the counterclaim remains pending at first instance. The referring court has the case in ‘Revision’ and refers 2 questions to the Court of Justice for a preliminary ruling.

 

First question:

May an action for infringement of an EU trade mark (Article 96(a) of Regulation No 207/2009) be dismissed on the ground of an objection that the trade mark application was filed in bad faith (Article 52(1)(b) of Regulation No 207/2009) if, despite the defendant having brought a well-founded counterclaim for a declaration of invalidity of the EU trade mark (Article 99(1) of Regulation No 207/2009), the court has not yet ruled on that counterclaim?

 

The Court points out that, given the unitary character of the EU trade mark and the objective of preventing inconsistent decisions in such matters, the declaration of invalidity of an EU trade mark based on such an absolute ground for invalidity must have effect throughout the Union and not only vis-à-vis the parties to the infringement action. That requirement means that the EU trade mark court concerned must rule on the counterclaim for a declaration of invalidity before ruling on the action for infringement. (33)

 

The answer to the first question is:

“Article 99(1) of Regulation No 207/2009 must be interpreted as meaning that an action for infringement brought before an EU trade mark court in accordance with Article 96(a) of that regulation may not be dismissed on the basis of an absolute ground for invalidity, such as that provided for in Article 52(1)(b) of that regulation, without that court having upheld the counterclaim for a declaration of invalidity brought by the defendant in that infringement action, pursuant to Article 100(1) of the regulation, and based on the same ground for invalidity.”

 

By its second question, the referring court asks, in essence, whether the provisions of Regulation No 207/2009 must be interpreted as meaning that an action for infringement can be dismissed within the meaning of Article 96(a) of that regulation on the basis of an absolute ground for invalidity, such as that provided for in Article 52(1)(b) of that regulation, even though the decision on the counterclaim for a declaration of invalidity, brought pursuant to Article 100(1) of the regulation, and based on the same ground for invalidity, has not become final.

 

According to the Court, there is no provision in regulation No 207/2009 that makes the EU trade mark court’s ability to dismiss actions for infringement of a trade mark on the basis of a ground for invalidity conditional upon that court’s decision upholding the counterclaim for a declaration of invalidity of that mark, on the same ground for invalidity, having become final, whereas such a requirement is provided for in other cases in Article 100 of that regulation. (39) In present case, it should borne in mind that the parties to both sets of proceedings are the same, they have the same grounds of defence and they must bear the consequences of their actions. The possibility that one of the parties may seek, through successive appeals to delay the definitive effect of court decisions cannot therefore prevail over the court’s obligation to determine the dispute brought before it.

 

Therefore, the answer to the second question is:

“The provisions of Regulation No 207/2009 must be interpreted as not precluding an EU trade mark court from being able to dismiss an action for infringement within the meaning of Article 96(a) of that regulation on the basis of an absolute ground for invalidity, such as that provided for in Article 52(1)(b) of that regulation, even though the decision on the counterclaim for a declaration of invalidity, brought pursuant to Article 100(1) of the regulation, and based on the same ground for invalidity, has not become final.”

 

IPPT20171019, CJEU, Raimund v Aigner

 

C-425/16 - ECLI:EU:C:2017:776