CJEU: Counterclaim for a declaration of invalidity of an EU trade mark MULTISELECT when protection of national trademark is claimed
13-12-2023 Print this page
Claim for infringement of a national trademark and the counterclaim for the invalidation of the EU trademark MULTISELECT. Procedural law applicable to similar legal actions concerning a national trademark. Principle of procedural autonomy. A Counterclaim for a declaration of invalidity of an EU trade mark may relate to all the rights which the proprietor of that mark derives from its registration and that the subject matter of that counterclaim is not restricted by the scope of the dispute as defined by the action for infringement.
The applicant is a natural person and holds the exclusive right to the EU word mark 'Multiselect'. The mark was registered on 05-06-2018 in favor of the applicant at the EUIPO. The respondent is also a natural person engaged in economic activity. As part of this activity, the respondent offers, among other things, a guide for prospective police officers. The main proceedings were initiated on 26-02-2020. In the submitted application, among other things, the following is requested: to order the respondent to cease the infringement of the EU mark 'Multiselect' by no longer using this mark to designate the goods and services he trades; that the mark 'Multiselect' no longer be applied to various types of marketing materials or be mentioned on the websites operated by the respondent for the sale of goods and services. During the procedure, the respondent filed a counterclaim, requesting the invalidation of the EU word mark 'Multiselect' registered in favor of the applicant."
Preliminairy Questions:
(1) Must Article 124(d) of Regulation [2017/1001], read in conjunction with Article 128(1) thereof, be interpreted as meaning that the term “counterclaim for … a declaration of invalidity” contained in those provisions may mean a [counter]claim for a declaration of invalidity only to the extent that that counterclaim is connected with the claimant’s EU trade mark infringement claim, thus allowing a national court not to hear a counterclaim for a declaration of invalidity the scope of which is broader than that connected with the claimant’s infringement claim?
(2) Must Article 129(3) of Regulation [2017/1001] be interpreted as meaning that the provision in question, which concerns “the rules of procedure governing the same type of action relating to a national trade mark”, refers to the national rules of procedure which would be applicable to specific proceedings concerning infringement of an EU trade mark (and to proceedings resulting from a statement of counterclaim seeking a declaration of invalidity), or does it refer generally to the national rules of procedure present in the legal order of a Member State, this being relevant in cases where, on account of the date on which the specific proceedings concerning infringement of an EU trade mark were initiated, the rules of procedure governing a counterclaim for a declaration of invalidity of a trade mark relating to national trade marks were not present in the legal order of a given Member State?
Ruling CJEU:
Article 124(d) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, read in conjunction with Article 128(1) thereof, must be interpreted as meaning that a counterclaim for a declaration of invalidity of an EU trade mark may relate to all the rights which the proprietor of that mark derives from its registration and that the subject matter of that counterclaim is not restricted by the scope of the dispute as defined by the action for infringement.
IPPT version will follow soon
