Case C‑425/16

Hansruedi Raimund

v

Michaela Aigner

(Request for a preliminary ruling from the Oberster Gerichtshof)

(Reference for a preliminary ruling — Intellectual and industrial property — EU trade mark — Regulation (EC) No 207/2009 — Article 96(a) — Infringement proceedings — Article 99(1) — Presumption of validity — Article 100 — Counterclaim for a declaration of invalidity — Relationship between an action for infringement and a counterclaim for a declaration of invalidity — Procedural autonomy)

Summary — Judgment of the Court (Ninth Chamber), 19 October 2017

1. EU law—Interpretation—Methods—Interpretation according to context and objective

2. EU trade mark—Disputes concerning the infringement and validity of EU trade marks—Jurisdiction in relation to infringement and validity—EU trade mark court unable to dismiss an action for infringement on the basis of an absolute ground for invalidity without having upheld the counterclaim for a declaration of invalidity brought by the defendant in that infringement action and based on the same ground for invalidity

   (Council Regulation No 207/2009, Arts 52(1)(b), 96(a), 99(1) and 100(1))

3. EU law—Direct effect—Individual rights—Safeguarding by the national courts—Legal action—Principle of procedural autonomy—Determination of the courts having jurisdiction to hear actions based on EU law and of the procedural rules governing the action—Limits—Respect for the principles of equivalence and effectiveness

   (Art. 4(3) TEU)

4. EU trade mark—Disputes concerning the infringement and validity of EU trade marks—Jurisdiction in relation to infringement and validity—EU trade mark court unable to dismiss an action for infringement on the basis of an absolute ground for invalidity without having upheld the counterclaim for a declaration of invalidity brought by the defendant in that infringement action and based on the same ground for invalidity—Definitive nature of the decision on the counterclaim for a declaration of invalidity—Condition—None

   (Council Regulation No 207/2009, Arts 52(1)(b), 96(a) and 100(1))

1.  See the text of the decision.

   (see para. 22)

2.  Article 99(1) of Regulation No 207/2009 on the European Union trade mark must be interpreted as meaning that an action for infringement brought before an EU trade mark court in accordance with Article 96(a) of that regulation may not be dismissed on the basis of an absolute ground for invalidity, such as that provided for in Article 52(1)(b) of that regulation, without that court having upheld the counterclaim for a declaration of invalidity brought by the defendant in that infringement action, pursuant to Article 100(1) of the regulation, and based on the same ground for invalidity.

   (see para. 35, operative part 1)

3.  In that context, it must be borne in mind that, in accordance with the Court’s settled case-law, in the absence of EU rules governing the matter, it is for the domestic legal system of each Member State, in accordance with the principle of procedural autonomy, to designate the courts and tribunals having jurisdiction and to lay down the detailed procedural rules governing actions for safeguarding rights which individuals derive from EU law, the Member States having nonetheless responsibility for ensuring that those rights are effectively protected in each case (see, to that effect, judgments of 30 September 2003, Köbler, C‑224/01, EU:C:2003:513, paragraph 47, and of 27 June 2013, Agrokonsulting, C‑93/12, EU:C:2013:432, paragraph 35).

   In this respect, in accordance with the principle of sincere cooperation enshrined in Article 4(3) TEU, the detailed procedural rules governing actions for safeguarding an individual’s rights under EU law must be no less favourable than those governing similar domestic actions (principle of equivalence) and must not render impossible in practice or excessively difficult the exercise of rights conferred by EU law (principle of effectiveness) (judgments of 16 December 1976, Rewe-Zentralfinanz and Rewe-Zentral, 33/76, EU:C:1976:188, paragraph 5; of 14 December 1995, Peterbroeck, C‑312/93, EU:C:1995:437, paragraph 12; and of 27 June 2013, Agrokonsulting, C‑93/12, EU:C:2013:432, paragraph 36).

   It follows from the Court’s case-law that the requirements stemming from the principles of equivalence and effectiveness apply, in particular, to the definition of the procedural rules governing actions based on EU law (see, to that effect, judgment of 27 June 2013, Agrokonsulting, C‑93/12, EU:C:2013:432, paragraph 37 and the case-law cited).

   (see paras 40-42)

4.  The provisions of Regulation No 207/2009 on the European Union trade mark must be interpreted as not precluding an EU trade mark court from being able to dismiss an action for infringement within the meaning of Article 96(a) of that regulation on the basis of an absolute ground for invalidity, such as that provided for in Article 52(1)(b) of that regulation, even though the decision on the counterclaim for a declaration of invalidity, brought pursuant to Article 100(1) of the regulation, and based on the same ground for invalidity, has not become final.

   (see para. 48, operative part 2)