Judges K Jürimäe, C Lycourgos (Rapporteur)
Advocate General M Campos Sánchez-Bordona
The claimant was the proprietor of an EU word mark under which he marketed a herbal base to be added to alcohol. The defendant also sold a similar product, with the identical name. When the claimant brought an action for infringement before an Austrian EU trade mark court, the defendant claimed that the claimant had obtained his mark improperly and in bad faith and brought a counterclaim for a declaration of invalidity of that mark before the same court pursuant to article 100(1) of Council Regulation (EC) No 207/2009. The court stayed the proceedings in respect of that counterclaim until a final ruling on the action for infringement, which was then dismissed on the ground that the trade mark application had been filed in bad faith. The claimant’s first appeal was dismissed and he subsequently appealed to the Supreme Court, Austria, which was uncertain as to whether the lower courts were entitled to rule on the question of bad faith in the infringement proceedings, when there had been no final decision on the counterclaim for a declaration of invalidity of the mark. In view of the fact that the defendant had relied on an absolute ground for invalidity within the meaning of article 52(1)(b) of the Regulation, which, as article 99(1) provided, could be invoked in an action for infringement only if the defendant brought a counterclaim based on such a ground, the court asked, inter alia, whether the action for infringement could be dismissed on that ground only if the trade mark concerned was, at the very least simultaneously, declared invalid on the basis of the counterclaim, since the outcome of the action for infringement depended solely on the plea of invalidity. The EU trade mark courts had exclusive jurisdiction, pursuant to article 96(a) of the Regulation, for all infringement actions. The Supreme Court, accordingly, stayed the proceedings and referred to the Court of Justice of the European Union for a preliminary ruling a number of questions on provisions of Regulation No 207/2009.
On the reference —
Held, (1) in order to safeguard the unitary character of an EU trade mark, the decision of an EU trade mark court which, in the context of a counterclaim for a declaration of invalidity brought pursuant to article 100(1) of Council Regulation (EC) No 207/2009, declared a mark to be invalid, necessarily had effect erga omnes (towards all) throughout the Union. Conversely, the decision of such a court on an action for infringement had effect only inter partes. That was the case where, as in the present case, the EU trade mark court had dismissed the infringement action because of the existence of an absolute ground for invalidity—such as the applicant’s bad faith when he filed the application for the trade mark as provided for in article 52(1)(b) of the Regulation—without first having ruled on the counterclaim. However, given the unitary character of the EU trade mark and the objective of preventing inconsistent decisions in such matters, the declaration of invalidity based on such an absolute ground for invalidity had to have effect throughout the Union and not only vis-à-vis the parties to the infringement action. That requirement meant that the EU trade mark court had to rule on the counterclaim before ruling on the action for infringement. Accordingly, article 99(1) of the Regulation meant that an action for infringement brought before an EU trade mark court in accordance with article 96(a) could not be dismissed on the basis of an absolute ground for invalidity, such as that provided for in article 52(1)(b), 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), and based on the same ground for invalidity (judgment, paras 29, 31–35, operative part, para 1).
(2) Regulation No 207/2009 did not contain any rule requiring the decision upholding the counterclaim for a declaration of invalidity to have become final in order for the EU trade mark court to be able to dismiss the action for infringement. Where, as in the case in the present case, the same court was required to rule both on an action for infringement of a mark and on a counterclaim for a declaration of invalidity of the same mark, consistency with the decision handed down by that court in the context of the counterclaim would prevent it from delivering an inconsistent ruling in the context of the infringement action. The fact that the EU trade mark court was dealing with the counterclaim for a declaration of invalidity based on article 100(1) of the Regulation and the infringement action brought pursuant to article 96(a) together ensured that the principle of effectiveness was observed. Accordingly, Regulation No 207/2009 did not preclude an EU trade mark court from being able to dismiss an action for infringement within the meaning of article 96(a) on the basis of an absolute ground for invalidity, such as that provided for in article 52(1)(b), even though the decision on the counterclaim for a declaration of invalidity, brought pursuant to article 100(1), and based on the same ground for invalidity, had not become final (judgment, paras 38, 44, 46, 48, operative part, para 2).
C Hadeyer for the claimant.
F Gütlbauer, S Sieghartsleitner and M Pichlmair for the defendant.