Case C‑450/13 P

Donaldson Filtration Deutschland GmbH

v

ultra air GmbH

‛Appeal — Community trade mark — Word mark ultrafilter international — Application for a declaration of invalidity — Abuse of rights’

Summary — Order of the Court (Sixth Chamber), 19 June 2014

1. Community trade mark — Surrender, revocation and invalidity — Application for a declaration of invalidity — Admissibility — Abuse of rights — No effect

   (Council Regulation No 207/2009, Arts 52(1) and 56(1)(a))

2. Appeals — Grounds — Inadequate statement of reasons — Reliance by the General Court on implied reasoning — Lawfulness — Conditions

1.  The fact that the applicant for a declaration of invalidity may file an application with a view to subsequently affixing the sign in question to its own products cannot amount to an abuse of rights in any circumstances. The public interest safeguarded by Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark is precisely that of keeping that sign freely available.

   In addition, the intention of the applicant for a declaration of invalidity to use the mark in question after the declaration of invalidity is not contrary to Regulation No 207/2009. Article 52(1) of that regulation provides that a Community trade mark may also be declared invalid where there are absolute grounds for refusal on the basis of a counterclaim in infringement proceedings, which presupposes that the defendant in that action may obtain a declaration of invalidity even if he has used the mark in question and intends to continue to do so.

   By contrast, the rejection of the application for a declaration of invalidity on the ground of an abuse of rights would preclude the effective attainment of the objectives pursued by Article 7(1)(b) and (c) of Regulation No 207/2009. Such rejection would not permit an assessment of the mark in the light of the rules governing the registrability of marks or of the existence of an absolute ground for refusal of registration.

   (see paras 43-45)

2.  See the text of the decision.

   (see para. 48)

Case C‑450/13 P

Donaldson Filtration Deutschland GmbH

v

ultra air GmbH

‛Appeal — Community trade mark — Word mark ultrafilter international — Application for a declaration of invalidity — Abuse of rights’

Summary — Order of the Court (Sixth Chamber), 19 June 2014

1. Community trade mark — Surrender, revocation and invalidity — Application for a declaration of invalidity — Admissibility — Abuse of rights — No effect

   (Council Regulation No 207/2009, Arts 52(1) and 56(1)(a))

2. Appeals — Grounds — Inadequate statement of reasons — Reliance by the General Court on implied reasoning — Lawfulness — Conditions

1.  The fact that the applicant for a declaration of invalidity may file an application with a view to subsequently affixing the sign in question to its own products cannot amount to an abuse of rights in any circumstances. The public interest safeguarded by Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark is precisely that of keeping that sign freely available.

   In addition, the intention of the applicant for a declaration of invalidity to use the mark in question after the declaration of invalidity is not contrary to Regulation No 207/2009. Article 52(1) of that regulation provides that a Community trade mark may also be declared invalid where there are absolute grounds for refusal on the basis of a counterclaim in infringement proceedings, which presupposes that the defendant in that action may obtain a declaration of invalidity even if he has used the mark in question and intends to continue to do so.

   By contrast, the rejection of the application for a declaration of invalidity on the ground of an abuse of rights would preclude the effective attainment of the objectives pursued by Article 7(1)(b) and (c) of Regulation No 207/2009. Such rejection would not permit an assessment of the mark in the light of the rules governing the registrability of marks or of the existence of an absolute ground for refusal of registration.

   (see paras 43-45)

2.  See the text of the decision.

   (see para. 48)