Intellectual property

CJEU rules on the procedural autonomy of national courts acting as EU trade mark courts

Published on 15th Sep 2023

In Case C-654/21, the CJEU ruled on a reference for a preliminary ruling from the Sąd Okręgowy w Warszawie (XXII Division of the District Court in Warsaw, Poland) in a dispute between two individuals.

The dispute concerned an action for infringement of the European Union trade mark “MULTISELECT” brought before the Warsaw IP Court and a counterclaim for a declaration of invalidity of that trade mark based, in particular, on lack of distinctiveness. While the infringement action concerned only certain goods and services for which the EU trade mark was registered, the counterclaim was aimed at having the EU trade mark declared invalid in its entirety.

The Polish court asked whether the counterclaim could be directed against the entire trade mark relied on, without being limited to the subject matter of the infringement action. In other words, the Polish court wanted to know whether the defendant could, by way of counterclaim, seek invalidation of the entire EU trade mark and not only of the goods and services relied on by the EU trade mark holder. The Polish court also wanted to know whether the invalidity counterclaim was linked to the content of an infringement claim.

For more on this issue, see the article with commentary by Dr. Agnieszka Sztoldman on Wolters Kluwer >

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* This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

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