CJEU: A counterclaim targeting the validity of an EUTM is not impacted by the withdrawal of the infringement action

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CJEU recognized the autonomous nature of counterclaims for invalidity of European Union Trademarks (EUTMs).

In its judgment in Case C-256/21, the Court of Justice of the EU (CJEU) recognized the autonomous nature of counterclaims for invalidity of European Union Trademarks (EUTMs).

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The case, revolved around a main action, brought before the German courts, over alleged infringement of an EUTM. The defendants in the case, filed a counterclaim seeking the invalidation of the EUTM, the plaintiff withdrew the action, but the defendants maintained the invalidity counterclaim.

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The First Instance Court held the counterclaim admissible and declared the EUTM invalid. The Appellate Court decided to refer to the CJEU for a preliminary ruling.

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The CJEU drew from the case law on Regulation 1215/2012 (mainly C-185/15) and held that a counterclaim is not indissociable from a mere defence. Although brought in proceedings initiated by means of another legal remedy, it is a separate and self standing claim the procedural treatment of which is independent of the main claim and which can thus be proceeded with even if the claim of the principal claimant is dismissed. There was no reason to consider that Regulation 2017/1001 understood counterclaim any differently.

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The Court of Justice first defined the meaning and scope to be given to the term ‘counterclaim’. It ruled that, considering there is no definition of it in Trademark Regulation 2017/1001, it refers to ‘a cross-action lodged by the defendant in proceedings brought against him or her by the applicant before the same court’ and that a counterclaim is not a single substantive means of defence linked to a main (infringement) action, but a remedy specific to the defendant which extends the subject matter of the dispute. Therefore, a counterclaim is separate and independent from the main claim and continues to exist if the main action has been withdrawn.

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Accordingly, the CJEU concluded that Article 124(a) and (d) and Article 128 of Regulation 2017/1001 must be interpreted as meaning that an EU trade mark court hearing an action for infringement based on an EU trade mark the validity of which is challenged by means of a counterclaim for a declaration of invalidity still has jurisdiction to rule on the validity of that mark, in spite of the withdrawal of the main action.

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CJEU on the concept of disclosure of “relevant evidence” in EU competition law cases

The disclosure of ‘relevant evidence’ includes documentation that a party may be required to create by compiling or classifying information, knowledge or data already in its possession

Under its judgment in Case C‑163/21, the Court of Justice of the EU (CJEU) held that the disclosure of ‘relevant evidence’, within the meaning of EU law, includes documentation that a party may be required to create by compiling or classifying information, knowledge or data already in its possession.

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The case emerged in the context of Directive 2014/104 on Damages Actions for Breach of EU Competition Law, following a 2016 EU Commission’s Decision over breach of Art 101 TFEU by 15 international truck manufacturers. The persons that had acquired trucks covered by that decision applied to the Commercial Court No 7, Barcelona for access to the evidence held by the manufacturers in order to quantify the artificial price increase resulting from those infringements, in particular by carrying out a comparison of recommended prices before, during and after the cartel period. The truck manufacturers argued that that disclosure of evidence was disproportionate in that it entailed creating new documents by compiling and processing information in other documents in their possession.

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Following a preliminary ruling request, the CJEU held on 10 November 2022 that the disclosure of ‘relevant evidence’ also covers evidence that the party to whom the request to disclose evidence is addressed must create ex novo by compiling or classifying information, knowledge or data in its possession, subject to compliance with the obligation of the national courts to restrict the disclosure of evidence to that which is relevant, proportionate and necessary, taking into account the legitimate interests and fundamental rights of that party.

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The USPTO shortens deadlines to respond to Office Actions for trademarks

… but the 6-month deadline for responding to Office Actions for Madrid Protocol Designations remains

In an effort to improve efficiency of handling TM applications, the United States Patent and Trademark Office (USPTO) announced that,

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as of 3 December 2022,

the deadline for responding to the majority of trade mark Office Actions will be reduced from six (6) to three (3) months. Yet, this will not impact Madrid Protocol Designations for which the deadline will remain six (6) months. Also, this new response period will not apply to post-registration office actions on December 3, 2022. Changes to the post-registration response period will be implemented on October 7, 2023. The USPTO’s announcement in full can be found here.

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Nikos Prentoulis recognized as a WTR Global Leader 2022

and answered questions on his career in IP, relationship with clients and current IP developments

A cool recognition of our work in Prentoulis Gerakini. Nikos Prentoulis was recognized as a WTR Global Leader 2022 and answered questions on his career in IP, relationship with clients and current IP developments.

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Nikos speaks of how curiosity led him to IP during his postgraduate studies in EU law and offered an alternative to a human rights law career, his passion at the time.

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He also shares his top 3 “tips” on for building long-lasting client relationships:

  • responsiveness, which should not be mistaken for speed
  • see and be seen, which means physically meeting with the client, where possible, and
  • adjusting to the client’s (sometimes evolving) risk tolerance level.

Finally, Nikos has a word of advice for brand owners who want to stay clear of “greenwashing” trouble. “Honesty is the best policy. If a brand has no tangible proof or record of environmental sustainability processes or results, they should simply avoid any statement that could be misleading”.

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You can visit the link here for information and the full interview with Nikos.

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Prentoulis Gerakini authors the Greek Chapter of ICLG Competition Litigation 2023

Nancy Gerakini and Elpida Kazantzidou shed light on Greek competition litigation law & practice and cover all key aspects of litigating competition cases in Greece before the Courts.

Nancy Gerakini, Partner and Head of our EU & Competition Practice, and Elpida Kazantzidou, Associate, co-authored the Greek Chapter of the International Comparative Legal Guide Competition Litigation 2023.

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Their contribution covers issues such as the legal bases for initiating competition litigation proceedings in Greece, division of competence between the Courts, final remedies, including the issue of quantification of damages, interim relief requirements and remedies. More particular topics on evidence, the “passing on” defence and the involvement of the  Hellenic Competition Commission in private competition litigation are also examined.

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You can access the Greek Chapter of the International Comparative Legal Guide - Competition Litigation 2023 here.  

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If you wish to learn more you can contact Nancy at gerakini@npng.gr

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