Ana Kričej, lawyer at ITEM, published in World Trademark Review (WTR) an article concerning ECJ’s preliminary ruling on the interpretation of Article 99 (1) of Council Regulation 207/2009 on the EU trademark. In pertinent case the Supreme Court of Austria submitted to the ECJ two main legal dilemmas:
-Can an action for infringement of an EU trademark be dismissed on the ground of an objection that the trademark application was filed in bad faith if, despite the defendant having brought a well-founded counterclaim for a declaration of invalidity of the EU trademark, the court had not yet ruled on that counterclaim?
-l If not, can the court dismiss an action for infringement on the ground of an objection that the trademark application was filed in bad faith if the court at least simultaneously upholds the counterclaim for a declaration on invalidity; or, must the court delay the decision on the action for infringement in any event until the decision on the counterclaim is res iudicata?
Due to the unitary character and equal effect of the EU trademarks and per contra inter partes effect of the infringement proceedings the ECJ ruled that national courts must first rule on the counterclaim of invalidity since it has erga omnes effect. Furthermore, ECJ ruled that national courts may dismiss an action for infringement, even though the decision on the counterclaim for a declaration of invalidity has not yet become res iudicata.
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