Trade mark guidelines, Part E Register operations, Section 6 Other entries in the register

Part E Register operations Section 6 Other entries in the register

Table of Contents

Part E Register operations Section 6 Other entries in the register Chapter 1 Counterclaims

Table of Contents

2 Application to register the filing of a counterclaim before an EUTM or 3 Application to register a judgment on a counterclaim before an EUTM

1 Introduction

Counterclaims, as provided for in Article 128 EUTMR or Article 123 EUDR, are defence claims made by a defendant that is being sued for the infringement of an EUTM or registered European Union design (EUD). By way of such a counterclaim, the defendant asks the European Union trade mark court (EUTM court) or European Union design court (EUD court) to declare the revocation or invalidity of the EUTM or the invalidity of the EUD that it is alleged to have infringed. The purpose of recording the filing and the final judgment of the counterclaim in the Office Register lies in the general interest of making all the relevant information on counterclaims concerning EUTMs and EUDs, in particular the final judgments thereof, publicly available. In this way, the Office can implement these final judgments, in particular those that declare the total or partial revocation or invalidity of an EUTM, as well as those that declare the total invalidity of an EUD. By entering such counterclaims and their final judgments in the Register, the Office strives to comply with the principles of conformity to truth, public faith and the legal certainty of a public register.

2 Application to register the filing of a counterclaim before an EUTM or an EUD court

Communications No 9/05 and No 10/05 of the President of the Office of 28/11/2005

According to Article 128(4) EUTMR and Article 125(2) EUDR, the EUTM or EUD court before which a counterclaim for revocation of an EUTM or for a declaration of invalidity of an EUTM or EUD has been filed must inform the Office of the date on which the counterclaim was filed. The Regulations provide that the court with which a counterclaim for revocation of an EUTM or for a declaration of invalidity of an EUTM or EUD has been filed must not proceed with the examination of the counterclaim until either the interested party or the court has informed the Office of the date on which the counterclaim was filed. Communications No 9/05 and No 10/05 of the President of the Office of 28/11/2005 concern the designation of EUTM and EUD courts in the Member States pursuant to Article 123 EUTMR and Article 119 EUDR. The Office also allows any party to the counterclaim proceedings to request the entry of a counterclaim in the Register, if not yet communicated by the EUTM or EUD court. The applicant should:

indicate the date on which the counterclaim was filed;

quote the number of the EUTM or EUD concerned;

state whether the application is for revocation or for a declaration of invalidity;

submit evidence that the counterclaim has been raised before the EUTM or EUD

court with authority to rule on the counterclaim, including, where possible, the case or reference number from the court. If the above is not submitted, or if the information submitted by the applicant requires clarification, the Office will issue a deficiency letter. If the deficiencies are not remedied, the Office will reject the application for registration of the counterclaim. The party concerned may file an appeal against this decision. The Office will notify the EUTM or EUD proprietor and the EUTM or EUD court that the counterclaim has been entered in the Register. If the request was made by the other party to the counterclaim proceedings, the Office will also inform this party. If an application for revocation or for a declaration of invalidity of an EUTM had already been filed with the Office before the counterclaim was filed, the Office will inform the courts before which a counterclaim is pending in respect of the same mark. The courts will stay the proceedings in accordance with Article 132(1) EUTMR and Article 130(1) EUDR until the decision on the application is final or the application is withdrawn.

3 Application to register a judgment on a counterclaim before an EUTM or an EUD court

Article 111(3)(o) and Article 128(6) EUTMR Articles 125(3) and 104(3)(r) EUDR Where an EUTM or a EUD court has delivered a judgment that has become final on a counterclaim for revocation of an EUTM or for a declaration of invalidity of an EUTM or EUD, a copy of the judgment must be sent to the Office. The Office also allows any party to the counterclaim proceedings to request the entry of a judgment on the counterclaim action in the Register, if not yet communicated by the EUTM or EUD court. The applicant should: submit a copy of the judgment, together with confirmation from the EUTM or EUD

court that the judgment has become final; indicate the date on which the judgment was issued;

quote the number of the EUTM or EUD concerned;

state whether the request is for revocation or for a declaration of invalidity;

in the event of partial cancellation or invalidity, indicate the list of goods and services

affected by the judgment, if relevant. In order to enter the counterclaim in the Register, the Office needs confirmation that the judgment is final (passée en force de chose jugée/rechtskräftig/adquirido fuerza de cosa juzgada, etc.). If the Office requires clarification, it may request this in writing.

The Office must mention the judgment in the Register and take the necessary measures to comply with its operative part. Where the final judgment partially cancels an EUTM, the Office will alter the list of goods and services according to the EUTM court judgment and, where necessary, send the amended list of goods and services for translation. The Office will notify the EUTM or EUD proprietor and the EUTM or EUD court that the judgment has been entered in the Register. If the request was made by the other party to the counterclaim proceedings, the Office will also inform this party.