In its judgment in Case C-256/21, the Court of Justice of the EU (CJEU) recognized the autonomous nature of counterclaims for invalidity of European Union Trademarks (EUTMs).
The case, revolved around a main action, brought before the German courts, over alleged infringement of an EUTM. The defendants in the case, filed a counterclaim seeking the invalidation of the EUTM, the plaintiff withdrew the action, but the defendants maintained the invalidity counterclaim.
The First Instance Court held the counterclaim admissible and declared the EUTM invalid. The Appellate Court decided to refer to the CJEU for a preliminary ruling.
The CJEU drew from the case law on Regulation 1215/2012 (mainly C-185/15) and held that a counterclaim is not indissociable from a mere defence. Although brought in proceedings initiated by means of another legal remedy, it is a separate and self standing claim the procedural treatment of which is independent of the main claim and which can thus be proceeded with even if the claim of the principal claimant is dismissed. There was no reason to consider that Regulation 2017/1001 understood counterclaim any differently.
The Court of Justice first defined the meaning and scope to be given to the term ‘counterclaim’. It ruled that, considering there is no definition of it in Trademark Regulation 2017/1001, it refers to ‘a cross-action lodged by the defendant in proceedings brought against him or her by the applicant before the same court’ and that a counterclaim is not a single substantive means of defence linked to a main (infringement) action, but a remedy specific to the defendant which extends the subject matter of the dispute. Therefore, a counterclaim is separate and independent from the main claim and continues to exist if the main action has been withdrawn.
Accordingly, the CJEU concluded that Article 124(a) and (d) and Article 128 of Regulation 2017/1001 must be interpreted as meaning that an EU trade mark court hearing an action for infringement based on an EU trade mark the validity of which is challenged by means of a counterclaim for a declaration of invalidity still has jurisdiction to rule on the validity of that mark, in spite of the withdrawal of the main action.