ADVANTAGES AND DISADVANTAGES OF BRINGING INFRINGEMENT PROCEEDINGS BASED ON A CTM RATHER THAN A NATIO

1

• ADVANTAGES AND DISADVANTAGES OF BRINGING
  INFRINGEMENT PROCEEDINGS BASED ON A CTM RATHER
  THAN A NATIONAL MARK
• Jean-Jo Evrard

2

• 1. ADVANTAGES
• 1.1. FORUM SHOPPING
• 1.2. PAN-EUROPEAN INJUNCTIONS

3

• 2. DISADVANTAGES
• The defendant is able to take judicial
  initiatives to impede the holders
• own action
• 2.1. Cancellation action before the OHIM
• 2.2. Action for a declaration of non-infringement
  before the competent CTM court.

4

• 1. ADVANTAGES
• 1.1. FORUM SHOPPING
• 1.2. PAN-EUROPEAN INJUNCTIONS

5

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

6

• a.
• Greater choice with respect to jurisdiction
• National level
• Court of the domicile Court of the place of
  the defendant of infringement

7

• Community level
• Domicile of the defendant place of infringement
• Domicile of the plaintiff
• Spanish Courts

8

• b.
• Possibility to sue co-defendants before the same
  court.
• 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.

9

• Allows all co-defendants to be sued before the
  courts of the place
• where one defendant is domiciled
• "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 in
• different Member States

10

• c.
• Possibility to select a jurisdiction on the basis
  of more diverse criteria than under national law.
• Distinctiveness of the trademark in a given
  country
• Investigative measures that can be ordered by the
  Court
• Language of the proceedings
• costs

11

• 1. ADVANTAGES
• 1.1. FORUM SHOPPING
• 1.2. PAN-EUROPEAN INJUNCTIONS

12

• Article 94 CTMR
• A CTM Court whose jurisdiction is based on
  "domicile or establishment" has jurisdiction
• "in respect of acts of infringement committed or
  threatened
• "within the territory of any of the Member
  States.

13

• A CTM Court whose jurisdiction is based on the
  place of infringement has jurisdiction
• "only in respect of acts of infringement
  committed or
• "threatened within the territory of the Member
  State in "which that Court is situated.

14

• However,
• a
• 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.

15

• b.
• 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.

16

• 2. DISADVANTAGES
• The defendant is able to take judicial
  initiatives to impede the holders
• own action
• 2.1. Cancellation action before the OHIM
• 2.2. Action for a declaration of non-infringement
  before the competent CTM court

17

• Very easy to initiate.
• a) If a cancellation action is brought prior to
  infringement proceedings,
• Article 100 (1) CTMR.

18

• "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 "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.

19

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

20

• Two reservations
• "Unless there are special grounds for continuing
  the hearing
• (Art. 100(1) CTMR)
• "If the CTM court stay proceedings, it may order
  provisional and
• "protective measures for the duration of the
  stay.
• (Art. 100(3) CTMR)

21

• b) If a cancellation action is brought after
  infringement proceedings,
• No guidance in the CTMR
• General principles of international law

22

• 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
• "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."

23

• 2. DISADVANTAGES
• The defendant is able to take judicial
  initiatives to impede the holders
• own action
• 2.1. Nullity action before the OHIM
• 2.2. Action for a declaration of non-infringement
  before the competent CTM court

24

• Article 92(b) CTMR
• CTM Courts shall have exclusive jurisdiction to
  hear "actions for declaration of
  non-infringement, if they are permitted under
  national law".
• Article 93 CTMR
• Jurisdiction can only be determined on basis of
  domicile.

25

• In order to determine if an action for a
  declaration of non-infringement is possible, it
  is necessary to determine
• the court with jurisdiction based on "domicile"
• if the national law of that country permits such
  proceedings

26

• Consequences of such an action
• 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).

27

• By bringing an action for a declaration of
  non-infringement, an 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).

28

• 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 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.

29

• Example 2
• 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.