Scope of EU trademark invalidity counterclaim – a decision by the European Court

The European Court has ruled in the case C‑654/21 – LP v KM, which concerns defining the scope of a [counter]claim for a declaration of invalidity of an EU trademark. The background is as follows:

LM is the proprietor of the EU word mark Multiselect (‘the contested mark’), registered on 5 June 2018 in respect of goods and services in Classes 9, 41, and 42. Those goods and services include inter alia, vocational guidance (education or training advice), education information, installation of computer software, maintenance of computer software, publication of texts and providing online electronic publications.

Since 2009, KP has offered as part of his business activities a guide for prospective police officers, in both printed and digital format, which aims to prepare them for the psychological tests covered by the contested mark, which constitute one of the stages of that recruitment procedure. KP promotes his guide on various websites.

On 26 February 2020, LM brought an action for infringement of the contested mark before the Regional Court, Warsaw, Poland, the referring court, seeking an order requiring KP to cease marking the goods and services he is marketing 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 those proceedings, on 30 July 2020, 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 Regulation 2017/1001, read in conjunction with Article 7(1)(b) to (d) and Article 7(2) of that regulation.

By judgment of 7 October 2021, the referring court dismissed the action for infringement in its entirety.

As regards the counterclaim, the referring court has doubts as to the scope of the examination which it must carry 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.

In the present case, while the claims in the main action concerned only the services and goods marketed by KP, the scope of the counterclaim is substantially broader, since KP claims that the contested mark should be declared invalid in so far as it covers not only the goods and services concerned in the main action, but also other goods and services.

Thus, the referring court raises the question whether all claims for a declaration of invalidity of the contested mark, irrespective of their actual connection with the infringement proceedings, fall within the concept of ‘counterclaim for … a declaration of invalidity’ within the meaning of Article 124(d) and Article 128(1) of Regulation 2017/1001, or whether that concept must be interpreted as covering only those claims which have an ‘actual connection’ with the infringement proceedings, namely those which fall within ‘the scope of the infringement proceedings’.

According to the referring court, to accept that a counterclaim may have no ‘actual connection’ with the infringement proceedings would result in the risk that the main proceedings would be ‘dominated’ by the counterclaim and that the counterclaim would lose its character as a defence to the claims set out in the main action. It favours interpreting the concept of ‘counterclaim’ as meaning that it can refer only to claims having an actual connection with the action for infringement, a connection which is ‘determined not by the content of the [contested] trademark right; nor is it determined by the scope of the defendant’s activities, but rather by the content of the claims set out in the [action for infringement]’.

In the view of the referring court, such an interpretation is supported, first, by the principle of procedural autonomy of the Member States and Article 129(3) of Regulation 2017/1001 and, secondly, by the rules governing the jurisdiction of EUIPO and that of the EU trade mark courts, from which it is apparent that the jurisdiction of those courts constitutes an exception in relation to the invalidity of an EU trade mark.

Lastly, the referring court explains that, on the date on which the action for infringement at issue in the main proceedings was brought, Polish law did not provide for the possibility for defendants in infringement proceedings brought by proprietors of trademarks registered in Poland to file a counterclaim for a declaration of invalidity, since Article 479¹²² of the Code of Civil Procedure, inserted by the Law of 13 February 2020, had not yet entered into force on that date. It therefore has doubts as to whether, for the purposes of the case in the main proceedings, those provisions may be regarded as ‘rules of procedure governing the same type of action relating to a national trademark’ within the meaning of Article 129(3) of Regulation 2017/1001.

In those circumstances, the Regional Court, Warsaw decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(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 trademark”, 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?’

The Court decision is:

Article 124(d) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark, read in conjunction with Article 128(1) thereof,

must be interpreted as meaning that a counterclaim for a declaration of invalidity of an EU trademark 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.