The dispute between the claimants and the first defendant concerned the entitlement to the goodwill attached to a brand name of an equine nutritional supplement and an EU registered trade mark for the same name. The claimants sought declarations that the first claimant was solely entitled to the trade mark, that any use of that mark did not infringe any of the defendant’s rights, and all goodwill arising from the name belonged to them. The defendant counterclaimed seeking an assignment of the trade mark under article 21 of Parliament and Council Regulation (EU) 2017/1001, or, alternatively, a declaration under article 60(1)(c) that the trade mark had been invalidly registered. Under article 124(d), EU trade mark courts, of which the High Court was an example, had exclusive jurisdiction over “counterclaims for revocation or for a declaration of invalidity of the trade mark pursuant to article 128”. The claimant contended that article 128, and, therefore, article 124(d), only applied where the counterclaim had been brought in infringement proceedings, and that since the key dispute between the parties was over ownership of goodwill, there was no jurisdiction to hear matters relating to articles 21 and 60(1)(c).
On the claimants’ application to strike out the counterclaim—
Held, application refused. Where a counterclaim was closely related to a claim, and the claim directly related to a European Union trade mark, an EU trade mark court had jurisdiction even if the claim did not include a claim that the mark had been infringed. The claimants were seeking a declaration that the first claimant owned the mark in issue and that any use they made of it did not infringe any of defendant’s rights, as well as a declaration that they owned the associated goodwill. The defendant’s counterclaim that the mark was not valid was a direct response to the claim, and raised issues that were also raised by the claim. Therefore, the counterclaim being very closely related to the claim, the court as a EU trade mark court had jurisdiction to determine it (paras 16, 29–30, 59).
Jonathan Moss (instructed by Venner Shipley llp) for the claimants.
Thomas St Quintin (instructed by Ward Hadaway, Newcastle) for the defendant.