When an EU Trademark (EUTM) is infringed, for example, where a third party uses an identical or confusingly similar sign, there are two routes available. The first is the administrative tool before the EUIPO (the European Union Intellectual Property Office), such as opposition against a filed application. The second is the judicial route.
This article focuses on the judicial route: which courts are competent, what types of actions can be brought, and, crucially, how the choice of forum affects the territorial reach of the court’s decision.
1) Which courts are competent?
Claims relating to EU trademarks are not filed before the EUIPO. They are brought before the national courts designated by each Member State as “EU trade mark courts”. In other words, the dispute is heard by a national court, but one that has been specifically entrusted with jurisdiction over EU trade mark litigation (Reg. (EU) 2017/1001, Art. 123).
In Greece, the designated EU trademark courts are the Courts of First Instance and the Courts of Appeal of Athens and Thessaloniki.
2) What types of actions can be heard by EU trade mark courts?
EU trade mark courts have exclusive jurisdiction over certain categories of disputes. These include, in particular: (Reg. (EU) 2017/1001, Art. 124)
- infringement actions (and, where national law allows, actions in relation to threatened or imminent infringement),
- actions seeking a declaration of non-infringement (where national law allows),
- proceedings concerning the specific situations addressed in Article 11(2) of Reg. (EU) 2017/1001 and
- counterclaims seeking revocation or a declaration of invalidity of an EU trade mark.
3) Jurisdiction
The key question is: “In which Member State should we file?” Reg. (EU) 2017/1001 lays down a structured set of jurisdictional rules.
3.1 The general rule: the defendant’s Member State
As a starting point, proceedings are brought in the Member State where the defendant has its domicile or registered office (or, if it has no domicile in a Member State, its establishment) (Reg. (EU) 2017/1001, Art. 125(1)).
3.2 If the defendant has no presence in a Member State
If the defendant has neither a domicile nor an establishment in any Member State, the claim may be brought in the Member State where the claimant has its domicile/registered office/establishment (Reg. (EU) 2017/1001, Art. 125(2)).
3.3 If neither party has a presence in a Member State
In the exceptional case where neither party has a domicile or establishment in a Member State, jurisdiction lies with the courts of the Member State in which the EUIPO has its seat (Reg. (EU) 2017/1001, Art. 125(3)).
3.4 Choice of court and “tacit submission”
Jurisdiction may also be established by procedural choice:
- where there is a valid choice-of-court agreement between the parties, or
- where the defendant enters an appearance without raising an objection to jurisdiction.
(Reg. (EU) 2017/1001, Art. 125(4), in conjunction with Reg. (EU) 1215/2012, Arts. 25 and 26)
3.5 Alternatively: the place where the infringement occurred (or is threatened)
In addition to the above, it is possible to bring proceedings in the Member State where the infringement occurred or is threatened to occur. This alternative basis does not apply to actions seeking a declaration of non-infringement (Reg. (EU) 2017/1001, Art. 125(5)).
4) What territorial effect can a decision have?
This point is often crucial: the legal basis on which jurisdiction is founded will determine the territorial scope of the court’s ruling.
4.1 Where jurisdiction is based on Articles 125(1)–(4)
Where proceedings are brought, for example, in the defendant’s Member State (or in the other situations covered by Articles 125(2) – (4)), the court may rule on infringing acts committed in any Member State. In that case, the decision may have paneuropean effect (Reg. (EU) 2017/1001, Art. 126(1)).
4.2 Where jurisdiction is based on Article 125(5) (place of infringement)
In contrast, if proceedings are brought based on the “place of infringement”, the court’s jurisdiction is limited to acts committed (or being committed) within that particular State (e.g. Greece) (Reg. (EU) 2017/1001, Art. 126(2)).
To conclude with, choosing the appropriate forum for EU trademark litigation is far more than a procedural box-ticking exercise. It is a strategic decision: it can determine whether the protection you obtain is confined to a single Member State or whether it can extend across the European Union, producing effects throughout the EU.
