1.

The dispute which has given rise to this request for a preliminary ruling is between two traders selling similar, if not identical, products (herbal preparations for adding to high-proof alcohol) which have the same name, ‘Baucherlwärmer’. One is, moreover, protected by an EU trade mark, registered at the European Union Intellectual Property Office (EUIPO). ( 2 )

2.

The owner of that distinctive sign (Hansruedi Raimund) brought an action for infringement of his trade mark, arguing that Michaela Aigner, who sold her goods under the same name, was in breach of the rights inherent in registration.

3.

Ms Aigner contested that action, raising a plea ( 3 ) seeking a declaration of the invalidity of the trade mark and, two years later, ( 4 ) lodging a counterclaim. In both, she contended that Mr Raimund had sought registration of the sign ‘Baucherlwärmer’ in bad faith, since she had been using the sign before he obtained the industrial property right.

4.

The dispute has given rise to two sets of proceedings, heard, at first instance, by the Austrian EU trade mark court (Handelsgericht Wien, (Commercial Court, Vienna, Austria)) and, on appeal, by the Oberlandesgericht Wien (Higher Regional Court, Vienna, Austria). Whilst the counterclaim is still pending at first instance, judgment has been given at first instance and on appeal in the trade mark infringement proceedings. The Oberster Gerichtshof (Supreme Court, Austria) must rule on an appeal on a point of law against the latter judgment.

5.

The Oberster Gerichtshof (Supreme Court) must determine, in particular, whether the judgment in the proceedings for infringement of the trade mark could lawfully be given before judgment was delivered on the counterclaim. In order to dispel its uncertainties in this regard, the Oberster Gerichtshof (Supreme Court) has referred two questions to the Court of Justice, which will have to give a ruling on the ambit of Regulation (EC) No 207/2009 ( 5 ) in the light of two relevant factors: (a) the presumption of the validity of EU trade marks and (b) the relationship between an action for infringement of an EU trade mark and any counterclaim for a declaration of invalidity that a defendant may bring against that action.

6.

According to recital 16 of the regulation:

‘Decisions regarding the validity and infringement of EU trade marks must have effect and cover the entire area of the Union, as this is the only way of preventing inconsistent decisions on the part of the courts and the Office and of ensuring that the unitary character of EU trade marks is not undermined. …’

7.

Recital 17 reads:

‘Contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of an EU trade mark and parallel national trade marks. …’

8.

In the general provisions of Title I, Article 1(2) provides:

‘An EU trade mark shall have a unitary character. It shall have equal effect throughout the Union: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Union. This principle shall apply unless otherwise provided in this Regulation.’

9.

In Title VI, concerning surrender, revocation and invalidity, Section 3 governs the grounds for invalidity of European Union trade marks and, in so far as is relevant for the present purposes, Article 52 lists the absolute grounds for invalidity in the following terms:

10.

As far as the present case is concerned, Article 53 refers to the relative rounds for invalidity as follows:

11.

Title X (‘Jurisdiction and procedure in legal actions relating to EU trade marks’), Section 2, dealing with disputes concerning the infringement and validity of EU trade marks, includes Article 95(1), which provides:

‘The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, hereinafter referred to as “EU trade mark courts”, which shall perform the functions assigned to them by this Regulation.’

12.

Pursuant to Article 96 (‘Jurisdiction over infringement and validity’):

‘The EU trade mark courts shall have exclusive jurisdiction:

…

13.

Article 99 (‘Presumption of validity — Defence as to the merits’) provides:

14.

Article 100 provides:

15.

For cases where courts or an EU trade mark court and EUIPO are seised of related actions, Article 104 states:

16.

In the 1980s and 1990s, Ms Aigner’s father traded in, inter alia, herbs and preparations made from spices and herbs, which he offered for sale both in his shop and itinerantly, in the streets and travelling to fairs and markets.

17.

In 2000, Ms Aigner took over her father’s business under the company name ‘Kräuter Paul’ (‘Paul the Herbalist’) and she sells, in particular, a herbal mixture to be soaked in high-proof alcohol, with the name ‘Baucherlwärmer’. ( 8 )

18.

Mr Raimund had worked with Ms Aigner’s father until 1998, when he started to compete with him. Under the company name ‘Bergmeister’, he sells a spice-based preparation which, since approximately 2000, he too has called ‘Baucherlwärmer’, and is used for identical purposes and has the same properties and effects as the rival preparation.

19.

On 28 April 2006, with the intention of securing exclusive rights over the sign, Mr Raimund obtained registration of the EU (word) mark ‘Baucherlwärmer’ in classes 5, 29, 30 and 33 of the Nice Agreement, ( 9 ) with priority from 17 May 2005, the date of the application.

20.

According to Mr Raimund, in July 2006, at a fair in Waldviertel (Lower Austria) and at other markets in the region of Upper Austria and Salzburg, he established that Ms Aigner was offering and selling her product under the name ‘Baucherlwärmer’.

21.

Taking the view that Ms Aigner was acting in breach of his rights derived from the EU mark, Mr Raimund sued her for trade mark infringement before the Handelsgericht Wien (Commercial Court, Vienna), which acts in that country as an EU trade mark court of first instance.

22.

In the trade mark infringement proceedings, Mr Raimund claimed that Ms Aigner should be ordered: (i) to cease using the sign ‘Baucherlwärmer’ for the goods and services in the classes referred to (action for a prohibitory injunction); (ii) to withdraw from trade any product or act in which the infringement of the trade mark right had occurred (action for withdrawal) ( 10 ) and, (iii) to have the judgment published (action for publication).

23.

In her defence, Ms Aigner argued, inter alia, that Mr Raimund acquired the EU trade mark in bad faith and contrary to fair practice. She relied upon the same arguments some time later when she lodged a counterclaim for a declaration that the trade mark registered by Mr Raimund was invalid.

24.

At first instance, the Handelsgericht Wien (Commercial Court, Vienna) stayed the counterclaim proceedings until final judgment should have been given in the infringement proceedings.

25.

However, the Oberlandesgericht Wien (Higher Regional Court, Vienna) overturned that stay on appeal, so that the counterclaim is still pending at first instance, ( 11 ) no judgment having yet been delivered. Nevertheless, the action for infringement was dismissed by judgment of the court of first instance on 17 May 2015, on the grounds that it had been established that Mr Raimund acted in bad faith when he applied for registration of the trade mark, as Ms Aigner had claimed.

26.

The appeal court confirmed the decision given at first instance by its judgment of 5 October 2015. It held that, under Article 99 of Regulation No 207/2009, in proceedings for infringement of a trade mark, the defendant may argue that the proprietor (at the relevant time, the applicant for registration) of a sign acted in bad faith, if that defendant puts in issue the validity of the trade mark by counterclaiming, even if that counterclaim has not yet been decided on. The requirement in Article 99(1) of Regulation No 207/2009 was, therefore, satisfied.

27.

According to the appeal court, when Mr Raimund applied for registration of the mark he had already known for a long time that Ms Aigner, and her father before her, used the sign ‘Baucherlwärmer’ for a product very similar to his. By his application, Mr Raimund sought to prevent Ms Aigner continuing to use that sign.

28.

The Oberlandesgericht Wien (Higher Regional Court, Vienna) confirmed, in short, that the trade mark registered by Mr Raimund was invalid, in accordance with Article 52(1)(b) of Regulation No 207/2009, on the grounds that it was filed in bad faith. Accordingly, the mark could not be relied upon against Ms Aigner.

29.

The Oberster Gerichtshof (Supreme Court) has to decide on the appeal on a point of law against the judgment given on appeal, that is, the judgment delivered in the trade mark infringement proceedings. The trade mark proprietor, Mr Raimund, argued before the court hearing the appeal on a point of law that the lower courts might not rule on the plea relating to bad faith in the infringement proceedings, unless the two cases (the action for infringement and the counterclaim for a declaration of invalidity) had previously been joined or a final judgment had been given in the proceedings relating to the counterclaim.

30.

The referring court states that, under Article 99(1) of Regulation No 207/2009, the objection relating to invalidity may be upheld only if the defendant in the infringement proceedings has ‘put in issue’ the validity of the mark by means of a counterclaim. The referring court states that, in accordance with a literal interpretation of that provision, the requirement laid down therein is satisfied merely by the filing of a counterclaim. However, if regard is had to the purpose of the provision, it must be noted that it attempts to avoid divergences between legal situations inter partes, derived from infringement proceedings, and situations inherent in the effect erga omnes of a judgment declaring the invalidity of a mark in counterclaim proceedings.

31.

The court making the reference takes the view that, although the EU legislature lays down the principle that an action for infringement may be dismissed only if there are duly established grounds for invalidity of the mark, with effect erga omnes, in its national law this is not exactly so. On the one hand, the rules governing proceedings for infringement of national trade marks do not provide for a declaration erga omnes of invalidity of a trade mark in a counterclaim. ( 12 ) On the other, in an action for infringement of the same national trade mark, a declaration of invalidity may be made only as a ‘preliminary issue’ with effect solely inter partes.

32.

In the area of EU trade marks, the referring court considers that, in order to ensure that a plea of invalidity relied upon in infringement proceedings can succeed, the trade mark concerned must be declared invalid in proceedings at the same time.

33.

The Oberster Gerichtshof (Supreme Court) summarises the three options — and associated uncertainties — available to it in the following terms:

34.

In those circumstances, the Oberster Gerichtshof (Supreme Court) decided to stay proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

35.

The order for reference was received at the Registry of the Court of Justice on 1 August 2016.

36.

Both parties to the main proceedings lodged written observations.

37.

It was not considered essential to hold a hearing, in accordance with Article 76(2) of the Rules of Procedure of the Court of Justice.

38.

Of the three options of the referring court, Mr Raimund supports the last, that is, that a definitive declaration of validity, in counterclaim proceedings (or, perhaps, in administrative proceedings) is necessary if an action for trade mark infringement is to be dismissed as to the substance.

39.

Mr Raimund bases his rejection of the first option (it is sufficient merely for the counterclaim to be brought in order to comply with Article 99(1) Regulation No 207/2009) on its being irreconcilable with the purpose of that provision. He therefore agrees with the referring court that the scheme of Regulation No 207/2009, in the light of Article 104 thereof too, gives counterclaims precedence over pleas in infringement proceedings, when a declaration of invalidity of a trade mark is sought. That precedence is derived from the effect erga omnes of judgments delivered at the end of the former, as opposed to the effect merely inter partes of judgments delivered on the latter.

40.

Mr Raimund likewise finds it inconceivable that the EU legislature would be satisfied with the mere procedural act of bringing the counterclaim. To accept that argument in order to hold that Article 99(1) of Regulation No 207/2009 has been satisfied would render Article 100(7) of that regulation meaningless.

41.

As regards the second option (the necessity of simultaneous judgments in the infringement and counterclaim proceedings), Mr Raimund rejects this because it would not prevent contradictory decisions, as the Oberster Gerichtshof (Supreme Court) acknowledged in its order for reference. ( 14 )

42.

Mr Raimund therefore argues in favour of the third option (a decision is not to be given on the infringement action until a final judgment is given in the counterclaim for a declaration of invalidity), because it respects the effect erga omnes of judgments declaring a trade mark invalid in counterclaim proceedings. Mr Raimund relies on reasons of procedural economy in support of that interpretation.

43.

For her part, Ms Aigner supports the first option put forward by the referring court. She bases her view on the literal interpretation of Article 99(1) of Regulation No 207/2009. In her view, all that that provision requires is that the counterclaim should have been brought (it is enough if the validity of the mark has been ‘put in issue’), but not necessarily that it should have been decided on in a judgment, still less that that judgment should have become final.

44.

Moreover, in accordance with Article 99(3) of Regulation No 207/2009, it may be claimed that a trade mark is invalid, on the grounds that the proprietor acted in bad faith, when an action for infringement is contested, for such a mark ‘could be declared invalid’ on account of an earlier right of the defendant’s, without any reference being made to a definitive judgment on invalidity.

45.

Ms Aigner points out that neither the wording nor the purpose of Article 99(1) of Regulation No 207/2009 supports the aim of preventing divergent decisions in proceedings for infringement (with effect inter partes) and proceedings for a declaration of invalidity (with effect erga omnes) of a trade mark. It is for national law to resolve this problem, which the EU legislature was already aware of and had accepted; furthermore, the more recent Regulation 2015/2424 did not amend the relevant provisions.

46.

Lastly, and in the alternative, should the Court disagree with her position, Ms Aigner proposes that the answer to the second question should be that dismissal of an action for infringement of a trade mark entails, at least simultaneously, a declaration of invalidity of the mark on a counterclaim, which requires the proceedings to be joined. Otherwise, the risk of divergent decisions on the merits would not be eliminated.

47.

The particular features of these proceedings may confuse those who are used to a system of civil procedure in which a counterclaim (not only in the area of trade mark law) is brought in the same proceedings and before the same judge or court as that hearing the main action, with that judge or court ruling on both at one and the same time in a single judgment. ( 15 )

48.

It appears from the order for reference that Austrian law of civil procedure does not necessarily follow the same lines, wherefore I believe it appropriate to put forward some considerations that may lead to a better understanding of the questions at issue.

49.

In the first place, the Oberster Gerichsthof (Supreme Court) states that, according to the Austrian law of civil procedure, ‘a court hearing infringement proceedings would … examine (on a preliminary basis) the claim for invalidity of a national mark even if the defendant had not filed any application for cancellation with the patent office (counterclaims are not provided for in relation to national trade marks)’. ( 16 ) However, that court accepts that this is not the case where EU trade marks are concerned.

50.

In the second place, if by counterclaim is meant, in general, a cross-action lodged by the defendant in proceedings brought against him by the applicant before the same court, ( 17 ) from the formal point of view Ms Aigner committed no error in making a counterclaim in the proceedings, because she lodged her counterclaim with the competent EU trade mark court in Austria. ( 18 )

51.

In the third place, and from a different perspective, it must be borne in mind that the national court has referred its questions on the assumption that the infringement proceedings could not, in this case, be dismissed on grounds other than bad faith on the part of the applicant (for example, no likelihood of confusion between the parties’ goods). The national court presumes that, those other criteria being met, it will not be essential to rule on the counterclaim as a preliminary issue.

52.

Does Article 99(1) of Regulation No 207/2009 permit an action for infringement of a trade mark to be dismissed on the grounds that the person who filed the trade mark acted in bad faith, when the defendant has, in turn, brought a counterclaim (also on the basis of bad faith) seeking a declaration that the trade mark is invalid and a decision on that counterclaim has not yet been given? That is, in short, the referring court’s first question.

53.

I believe that it would be too simplistic to give an answer based solely on the wording of Article 99(1) of Regulation No 207/2009. For want of other references in case-law (since, unless I am mistaken, that provision has not yet been interpreted by the Court), the answer must be based on two elements underlying the provision to be interpreted and others in the same legislative context.

54.

The first of those elements is the unitary character of the EU trade mark, the importance of which must not be disregarded. According to recital 3 thereof, the aim of Regulation No 207/2009 is to introduce EU arrangements for trade marks which grant those trade marks uniform protection so that they produce their effects throughout the entire area of the Union.

55.

That aim appears in Article 1(2) of Regulation No 207/2009, in accordance with which an EU trade mark has unitary character, has equal effect throughout the EU and may not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor may its use be prohibited, save in respect of the whole of the European Union. ( 19 )

56.

Recitals 16 and 17 of the same regulation emphasise the unitary character of the EU trade mark. According to them, on the one hand, decisions regarding the validity and infringement of EU trade marks must cover the entire area of the European Union, in order to prevent inconsistent decisions on the part of the courts and the Office and to ensure that the unitary character of those trade marks is not compromised. On the other hand, they stress the necessity of avoiding contradictory judgments in actions involving the same acts and the same parties and brought on the basis of an EU trade mark and parallel national trade marks. ( 20 )

57.

The second important element is the presumption of validity enjoyed by EU trade marks, following the checks carried out by EUIPO in its examination of trade mark applications. Observance of the principle of the rule of law means that it must be acknowledged that such marks are fully effective (in that their registration is an act emanating from an EU body), so long as they have not been declared invalid by another act to the contrary, issued by a competent court, that has become final. ( 21 )

58.

The legislative framework of that presumption is found in Article 99(1) of Regulation No 207/2009, pursuant to which all concerned, including national courts, must treat EU trade marks as valid in principle.

59.

The mechanisms for challenging the validity of an EU trade mark are provided for in Article 52(1) of Regulation No 207/2009 and amount to two only: (a) administrative proceedings before EUIPO on application by a party ( 22 ) and (b) a counterclaim in infringement proceedings; that is, legal proceedings before the national EU trade mark courts.

60.

It may be inferred from those provisions, taken together, that EU trade mark courts are prohibited from examining of their own motion whether a trade mark is invalid and that, in the proceedings brought before them, it is for the defendant, by a counterclaim, to seek a declaration of invalidity ( 23 ) of the trade mark which, in the main proceedings, it is alleged he has infringed. ( 24 )

61.

However, under Article 99(3) of Regulation No 207/2009, a defendant in infringement proceedings may ( 25 ) submit a plea relating to invalidity without having to bring a counterclaim, but only if he relies upon an earlier right over the sign at issue. ( 26 ) That is not the case in this instance.

62.

It follows from Articles 52(1) and 53(1), read in conjunction with Article 99(1) and (3) and Article 100(1) of Regulation No 207/2009, that a declaration of the invalidity of an EU trade mark in legal proceedings may be requested only by way of a counterclaim. This must be based on one or more of the grounds listed in Articles 52 (absolute grounds for invalidity) and 53 (relative grounds for invalidity) of that regulation The sole exception to that rule, included in Article 99(3) to which I referred above, is not applicable to the present case.

63.

That decision of the EU legislature is consistent with the unitary character of the EU trade mark and with the aim of preventing inconsistent judgments being given in relation to the same sign which has been registered by EUIPO.

64.

Judgments given in proceedings for infringement of EU trade marks have effect inter partes, so that, once they are final, the force of res judicata binds only those who were parties to the proceedings. However, in upholding a counterclaim, judgments declaring a trade mark invalid have effect erga omnes. This is why, under Article 100(6) of Regulation No 207/2009, EUIPO has to ‘mention the judgment’ (on annulment) in the Register of EU trade marks, and that judgment will have retroactive effect, in other words, effect ex tunc. ( 27 )

65.

If it were accepted that any defendant in an action for infringement of a trade mark could simply put forward as a plea the (absolute or relative) grounds for invalidity of that mark, there would be a risk that similar actions brought by the trade mark proprietor in different jurisdictions would lead, in some cases, to a declaration of invalidity of the mark and, in others, to the opposite outcome. It should be borne in mind that, under Article 97(5) of Regulation No 207/2009, when bringing infringement proceedings the proprietor has the choice of the forum delicti commissi as an alternative to the courts of the place where the defendant is domiciled. ( 28 )

66.

The EU legislature intended, therefore, that, in national legal proceedings, the validity of an EU trade mark could be challenged only by means of a counterclaim. At the same time, it created a security measure to deal with the possibility of numerous actions, whether infringement proceedings or counterclaims: a stay of proceedings, as provided for in Article 104(1) of Regulation No 207/2009.

67.

Against this background, the interpretation of Article 99(1) of Regulation No 207/2009 proposed by Ms Aigner cannot be accepted. In her submission, a plea relating to the invalidity of the mark could be upheld, in infringement proceedings, provided that the counterclaim has been brought (but not yet decided upon).

68.

As the referring court rightly observes, that approach is incompatible with the aim of the provision. It is difficult to understand why the EU legislature would require the proceedings to be stayed when there exists lis pendens between two trade mark courts, as a means of avoiding divergent judgments on identical subject matter, but not impose that obligation when infringement and counterclaim proceedings are allocated to the same EU trade mark court (even if sitting as two different benches).

69.

It is true that, as a result of their procedural autonomy, ( 29 ) it is for each Member State to determine the structure of its EU trade mark courts and to establish the rules of procedure for those courts, without prejudicing observance of the rules laid down in Regulation No 207/2009. However, the system of conferral of powers (and, in that connection, the system of allocation of cases within a single court which has more than one bench of judges) on national EU trade mark courts may not frustrate the aim of preventing inconsistent judgments in relation to the same mark.

70.

The procedure for bringing a legal challenge against an EU trade mark distinguishes between a defence as to the merits (plea) and a counterclaim. The only possibility for a defendant of putting forward a plea relating to the invalidity of a mark in infringement proceedings arises when that defendant himself has an earlier right over that sign (Article 99(3) of Regulation No 207/2009, cited above). ( 30 )

71.

Apart from that situation, anyone who is sued for infringement of an EU trade mark and who argues that that mark is invalid must use the counterclaim procedure. A claim for a declaration of invalidity so raised automatically becomes a preliminary issue in relation to the action for infringement itself, for the presumption of validity of the mark is called into question. Before examining whether the rights inherent in the mark were infringed, it is necessary to determine, as an essential preliminary issue, whether that distinctive sign remains valid, which is precisely what the defendant has questioned by means of the counterclaim.

72.

It would not make sense; procedurally, to dismiss the infringement proceedings (except in the situation mentioned by the referring court) without dispelling the uncertainties regarding the invalidity of the trade mark raised in the counterclaim. That lack of procedural sense would arise either if the cases were heard by different EU trade mark courts or if they were heard by a single court (in this case, the Handelsgericht Wien (Commercial Court, Vienna)) sitting as benches of judges seised of those proceedings separately.

73.

The answer to the first question should therefore be that, on a proper construction of Article 99(1) of Regulation No 207/2009, when a counterclaim has been brought seeking a declaration of invalidity of an EU trade mark on the grounds that the proprietor filed the mark in bad faith, the court with jurisdiction to hear the main action for infringement of that mark may not uphold that ground for invalidity, raised as a plea in defence, until judgment has been given on the counterclaim.

74.

The second question of the Oberster Gerichtshof (Supreme Court) is referred if the first question should be answered in the negative, as I have proposed.

75.

The referring court’s second question is based on the presumption that, in the circumstances set out above, the EU trade mark court has to wait for judgment on the counterclaim before deciding on the infringement proceedings. Is it sufficient that that judgment has been given or must it have become final?

76.

If the decision on the counterclaim is favourable to the defendant (that is, if the sign is declared invalid), the trade mark court could, in accordance with its national law, ( 31 ) either dismiss the action in the infringement proceedings or declare it devoid of purpose, because a trade mark that has lost ex tunc the protection of registration cannot be infringed.

77.

In making the judgment in the infringement proceedings conditional on a prior decision on the counterclaim, the competent court fulfils the aim of avoiding contradictory judgments, which could have jeopardised the unitary character of the EU trade mark.

78.

However, the Oberster Gerichtshof (Supreme Court) fears that the procedural conduct of the parties to the infringement proceedings and the counterclaim proceedings could again sap the consistency achieved by simultaneous judgments, if, for example, an appeal to a higher court was brought against only one of those judgments. ( 32 )

79.

The referring court asks whether, in such a situation, precisely in order to prevent any inconsistency, the first court must be required to refrain from deciding on the infringement proceedings until the favourable judgment on the counterclaim has acquired the force of res judicata.

80.

In my opinion, Regulation No 207/2009 does not contain a certain rule providing that the court with jurisdiction must wait until the judgment upholding the counterclaim is final. Nor does it contain a rule preventing that.

81.

Of those articles of Regulation No 207/2009 that refer explicitly to a judgment having become ‘final’, ( 33 ) Article 56(3) links this to a court in a Member State having adjudicated between the same parties on an application with the same subject matter and the same cause of action, and to that decision having become final (in other words, the decision cannot be overturned and no appeal can lie against it). ( 34 )

82.

However, those provisions give no clarification as to how the judgments in the respective disputes are to be treated until such time as those judgments have become final. The explanation for that legislative silence is probably that Regulation No 207/2009 deals with the finality of judgments from the point of view of the consistency between decisions of the Office and decisions of national EU trade mark courts. It is appropriate to look briefly at this point

83.

Unlike the procedure for registration of EU trade marks, which, in the scheme of Regulation No 207/2009, is established as being the exclusive task of EUIPO, unaffected by any decision of a national court, ( 35 ) competence for decl aring an EU trade mark invalid is shared between the national EU trade mark courts and the Office.

84.

However, that competence must be exercised alternatively and exclusively; that is, only the first body seised of the dispute ( 36 ) (whether an EU trade mark court before which a counterclaim has been brought, or EUIPO, if an application for a declaration of invalidity has been filed with it) may rule on the validity of the industrial property right. In order to prevent inconsistent decisions, the other body must stay the proceedings before it until the first proceedings have been resolved, in accordance with Article 104 of Regulation No 207/2009.

85.

That stay of proceedings ( 37 ) and the duty (Article 100(6) of the regulation) of the national EU trade mark court to notify EUIPO of its judgment, when the decision declaring an EU trade mark invalid has become res judicata in proceedings on a counterclaim, are the mechanisms whereby the legislature seeks to ensure that decisions on invalidity are consistent and that the register of EU trade marks matches the reality of the signs it protects.

86.

When it is the same court that must, at different times, decide on an action for infringement of a trade mark and on a counterclaim seeking a declaration that that mark is invalid, consistency with its own decision on the counterclaim will prevent the decision on infringement being contradictory. However, I can find no basis for requiring that court, in the light of Regulation No 207/2009, to stay the (second) set of proceedings to take account of the vicissitudes of the proceedings in the higher courts.

87.

The duty of an EU trade mark court, to which I referred in my analysis of the first question, is to await the outcome of the counterclaim, before ruling (at the same time or later, depending on the national procedural provisions) on the action for infringement. I believe that, once judgment has been given on the former, that duty need not necessarily be made conditional upon the procedural strategies of the parties, more or less dependent on their chances of succeeding in subsequent appeals.

88.

I agree with the Oberster Gerichtshof (Supreme Court) that linking the outcome of the infringement proceedings to the conduct of the parties in relation to subsequent appeals against the judgment allowing the counterclaim would, in all likelihood, lead to significant delays in the adjudication of those proceedings. The aim of preventing divergent judgments in relation to the same trade mark has been satisfied by giving priority to the judgment on the counterclaim, in the light of which the infringement proceedings will be determined.

89.

The parties to the two sets of proceedings being the same, albeit in opposite procedural positions, they enjoy the same rights of defence and must bear the consequences of their own acts. Admittedly, either of them may, by successive appeals, delay the effect of res judicata of the judgments at first instance, but that possibility must not take precedence over the duty of the court that has to settle the case before it.

90.

That said, I wish to make it clear that, although Regulation No 207/2009 does not provide that the court hearing and determining the infringement proceedings must wait until the decision on the counterclaim becomes final, I cannot find any provisions of that legislative text that preclude such a delay either. The procedural rules of each Member State, as interpreted by their highest courts, may opt for either approach, failing any rules of EU law in that regard.

91.

It may be that no appeal is brought against the judgment on the counterclaim, in which case it will be for the court that delivered that judgment to notify EUIPO of its judgment having the force of res judicata. Given that the period allowed for lodging an appeal will not be particularly long, I see no reason why the national court should wait for the judgment on the counterclaim to become final before ruling on the infringement proceedings. If, however, an appeal is brought against the judgment on the counterclaim, the national court will have to assess the specific features of the infringement proceedings ( 38 ) and whether those proceedings ought to be stayed until the judgment on the counterclaim has become final.

92.

In the light of the foregoing considerations, I believe that the answer to the second question should be that an EU trade mark court may dismiss an action for infringement of a trade mark, on the grounds that the applicant filed that trade mark in bad faith when, at least at the same time, the counterclaim seeking a declaration of invalidity of that mark is upheld on the same grounds. EU law does not oblige an EU trade mark court to wait until the judgment on the counterclaim has become final before ruling on the infringement proceedings, but nor does it preclude that court from doing so.

93.

In the light of the arguments set out, I propose that the Court reply as follows to the questions referred for a preliminary ruling by the Oberster Gerichtshof (Supreme Court, Austria):