The matter at hand

Trade mark proprietor LM brought an action for infringement regarding the EU trade mark MULTISELECT before the Sąd Okręgowy w Warszawie (Regional Court Warsaw, Poland), seeking an order requiring KP to cease marking the goods and services KP markets with the contested mark and to cease placing that mark on all materials connected with the marketing of those goods and services.

In the course of the proceedings, KP filed a counterclaim for a declaration of invalidity of the contested mark in respect of some of the goods and services for which it had been registered, pursuant to Article 59(1) of Trade Mark Regulation 2017/1001Regulation (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 7(1)(b) to (d) and Article 7(2) of that regulation.

The Sąd Okręgowy w Warszawie dismissed the action for infringement in its entirety. With regard to the counterclaim, the Sąd Okręgowy w Warszawie had doubts as to the scope of the examination which must be carried out where, as in the case in the main proceedings, the subject matter of a counterclaim goes beyond a ‘defence’ put forward in response to the action for infringement. While the claims in the main action concerned only the services and goods marketed by KP, the scope of the counterclaim was substantially broader, since KP claimed that the contested mark should be declared invalid in so far as it covered not only the goods and services concerned in the main action, but also other goods and services.

The referring court, in essence, asked the ECJ whether Article 124(d) of Trade Mark Regulation 2017/1001Regulation (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 whether the subject matter of that counterclaim is not restricted by the scope of the dispute as defined by the action for infringement.

The judgment of the ECJ

In the absence of a definition, the ECJ first discusses the concept of ‘counterclaim’ laid down in Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark. The ECJ holds that a counterclaim is not indissociable from a mere defence and recalls its decision in Gemeinde Bodman-Ludwigshafen (C‑256/21): “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” (paragraph 32).

The ECJ continues that, given the independent nature of the counterclaim provided for in Article 128 of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, the subject matter of that counterclaim cannot be restricted by that of the action for infringement in connection with which that counterclaim is brought (paragraph 35). This would be contrary to the principle of procedural economy, which is one of the objectives pursued by the counterclaim (paragraph 44). Article 59(3) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, which provides that an EU trade mark is to be declared invalid only as regards the goods or services in respect of which the ground for invalidity relied on exists, constitutes the only restriction laid down in that regulation concerning the scope and outcome of an application for a declaration of invalidity and, accordingly, of a counterclaim for a declaration of invalidity (paragraph 45).

Lastly, the ECJ  points out that both EUIPO and national courts have jurisdiction to review the validity of EU trade marks: “Thus, having regard to the system of division of jurisdiction described in paragraphs 51 to 53 above, it should be observed that, in the context of the scheme established by Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, which, in accordance with recital 4 and Article 1(2) thereof, enshrines the unitary character of the EU trade mark, the EU legislature intended to confer jurisdiction to review the validity of EU trade marks both on EUIPO and, in respect of their decisions on counterclaims, on EU trade mark courts (judgment of 13 October 2022, Gemeinde Bodman-Ludwigshafen, C‑256/21, EU:C:2022:786, paragraph 47)” (paragraph 54).

In light of these considerations, the ECJ rules with regard to the first question that “Article 124(d) of Trade Mark Regulation 2017/1001Regulation (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.” (paragraph 55).

In the light of the answer given to the first question, the ECJ rules that there is no need to answer the second question, that reads: “It should be noted, as the European Commission observed, that the second question is based on the premiss that the question of the scope of a counterclaim such as that at issue in the main proceedings is not governed by EU law. Thus, in the absence of specific national rules on counterclaims for a declaration of invalidity of national trade marks, the referring court seeks to ascertain whether national procedural rules of general application which specify the scope of counterclaims in other areas of litigation may be deemed to be ‘rules of procedure governing the same type of action’, within the meaning of Article 129(3) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark.”