ADVANTAGES AND DISADVANTAGES OF BRINGING INFRINGEMENT PROCEEDINGS

BASED ON A CTM RATHER THAN A

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BASED ON A CTM RATHER THAN A NATIONAL MARK

Jean-Jo Evrard

1. ADVANTAGES

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1.1. FORUM SHOPPING

1.2. PAN-EUROPEAN INJUNCTIONS

2. DISADVANTAGES

The defendant is able to take judicial initiatives to impede the holder’s

own action :

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own action :

2.1. Cancellation action before the OHIM

2.2. Action for a declaration of non-infringement before the competent CTM court.

1. ADVANTAGES

1.1. FORUM SHOPPING

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1.1. FORUM SHOPPING

1.2. PAN-EUROPEAN INJUNCTIONS

It is much more interesting to forum shop at the Community level.

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level.

Three reasons :

a.

Greater choice with respect to jurisdiction :

National level

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National level

Court of the domicile Court of the place of the defendant of infringement

Community level

Domicile of the defendant place of infringement

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Domicile of the plaintiff

Spanish Courts

b.

Possibility to sue co-defendants before the same court.

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Article 6(1) of the Council Registration (EC) n° 44/2004 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.

Allows all co-defendants to be sued before the courts of the placewhere one defendant is domiciled

"provided that the claims are so closely connected that it is

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"provided that the claims are so closely connected that it is "expedient to hear and determine them together to avoid the "risk of irreconcilable judgments resulting from separate "proceedings.

Application to CTM infringement by different parties established indifferent Member States

c.

Possibility to select a jurisdiction on the basis of more diverse criteria than under national law.

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iDistinctiveness of the trademark in a given country

iInvestigative measures that can be ordered by the Court

iLanguage of the proceedings

icosts

1. ADVANTAGES

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1.1. FORUM SHOPPING

1.2. PAN-EUROPEAN INJUNCTIONS

Article 94 CTMR

A CTM Court whose jurisdiction is based on "domicileor

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establishment" has jurisdiction

"in respect of acts of infringement committed or threatened

"within the territory of any of the Member States.

A CTM Court whose jurisdiction is based on the place of infringement has jurisdiction

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"only in respect of acts of infringement committed or

"threatened within the territory of the Member State in"which that Court is situated.

However,

a

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Article 33(1) of Council Regulation 44/2001

"A judgment given in a Member State shall be recognised in "the other Member States without any special procedure being "required.

b.

Several co-defendants before the same Court.

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Several co-defendants before the same Court.

The Court has jurisdiction to prohibit the infringement in the Member States where the co-defendants are situated.

2. DISADVANTAGES

The defendant is able to take judicial initiatives to impede the holder’s

own action

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own action

2.1. Cancellation action before the OHIM

2.2. Action for a declaration of non-infringement before the competent CTM court

Very easy to initiate.

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a) If a cancellation action is brought prior to infringement proceedings,

Article 100 (1) CTMR.

"A Community trademark court hearing an action referred to in "Article 92 (…) shall unless there are special grounds for continuing "the hearing, of its own motion after hearing the parties or at the

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"the hearing, of its own motion after hearing the parties or at the "request of one of the parties and after hearing the other parties, stay"the proceedings where the validity of the Community trademark is "already in issue before another Community trademark court on "account of a counterclaim or where an application for revocation or "for a declaration of invalidity has already been filed at the Office.

Stay of proceedings

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Infringement proceedings can be stayed for many years if invalidity proceedings are carried through the end.

Two reservations :

i"Unless there are special grounds for continuing the hearing“

(Art. 100(1) CTMR)

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(Art. 100(1) CTMR)

i"If the CTM court stay proceedings, it may order provisional and

"protective measures for the duration of the stay.

(Art. 100(3) CTMR)

b) If a cancellation action is brought after infringement proceedings,

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proceedings,

iNo guidance in the CTMR

iGeneral principles of international law

If the respondent questions the validity of a Community trademark, it must file a counterclaim with the competent Community trademark court, in accordance with Article 96 CTMR. This court will rule on the validity of the trademark and, according to Article 96(7) CTMR, may:

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96(7) CTMR, may:

"…stay the proceedings on application by the proprietor of the Community trade mark and after hearing the other parties and may request the defendant to submit an application for revocation or for a declaration of invalidity to the Office within a time limit which it shall determine. If the application is not made within the time limit, the proceedings shall continue; the counterclaim shall be deemed withdrawn."

2. DISADVANTAGES

The defendant is able to take judicial initiatives to impede the holder’s

own action

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own action

2.1. Nullity action before the OHIM

2.2. Action for a declaration of non-infringement before the competent CTM court

Article 92(b) CTMR

CTM Courts shall have exclusive jurisdiction to hear "actions for declaration of non-infringement, if they are permitted under national

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declaration of non-infringement, if they are permitted under national law".

Article 93 CTMR

Jurisdiction can only be determined on basis of “domicile”.

In order to determine if an action for a declaration of non-

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In order to determine if an action for a declaration of non-infringement is possible, it is necessary to determine

ithe court with jurisdiction based on "domicile"

iif the national law of that country permits such proceedings

Consequences of such an action

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Can paralyse possible infringement proceedings brought subsequently by the trademark holder.

Indeed, the two actions are related with the meaning of Article 27 of Council Regulation 44/2001 (principle of litis pendens).

By bringing an action for a declaration of non-infringement, an alleged infringer can thus force the holder of a Community

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alleged infringer can thus force the holder of a Community trademark to appear before the court of its choosing and can also take advantage of the Community forum-shopping rules (although jurisdiction cannot be based on the place of infringement).

Example 1

Suppose a holding company based in Funchal (Madeira) holds a Community trademark used by a company established in the United Kingdom. The latter notices that a French company is infringing the

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Kingdom. The latter notices that a French company is infringing the trademark in the UK and threatens to bring infringement proceedings before the High Court in London. If the French company wishes to avoid the jurisdiction of the London court for strategic reasons, it can bring an action for a declaration of non-infringement before the Portuguese Community trademark court, i.e., the Lisbon Commercial Court.

Example 2:

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A German company is accused by a US trademark holder of infringing a Community trademark in France and Spain. The German company can avoid proceedings in these two countries by bringing an action for a declaration of non-infringement in Germany, before the competent court of the place where it is domiciled.