For businesses managing intellectual property across Europe, the battlefield often shifts before a single verdict is reached. A recent legal development regarding the interaction between national infringement courts and the European Union Intellectual Property Office (EUIPO) suggests that procedural strategy can be just as decisive as substantive law. The core question is simple but consequential: If a defendant in an EU trademark infringement suit fails to challenge the validity of the plaintiff’s mark immediately, do they lose the right to do so later?
The answer, according to recent legal opinions, appears to be no. This interpretation fundamentally alters how companies must monitor and defend their trademarks, turning what seems like a technical procedural nuance into a significant strategic lever.
The Dual Pathway for Validity Challenges
Under the European Union Trade Mark Regulation (EUTMR), a defendant facing an infringement claim has two distinct avenues to challenge the validity of the opposing trademark: filing a counterclaim within the national court hearing the infringement case, or filing a declaration of invalidity directly with the EUIPO.
The complexity arises when a defendant chooses not to file a counterclaim. Does this silence constitute a waiver of their right to challenge the mark’s validity through the EUIPO?
In Case C-392/25, involving the wine brands Bodegas Sanviver and Bodegas Vega Sicilia, the Advocate General has opined that the door remains open. The reasoning is rooted in the text of the regulation itself. The EUTMR provides two parallel mechanisms for challenging validity but does not explicitly state that initiating an infringement action closes the EUIPO route. Unlike some national laws, such as those in Spain, which explicitly require defendants to raise validity challenges via counterclaim once litigation begins, EU law remains silent on this specific restriction.
Consequently, a defendant may file an invalidity application with the EUIPO at a late stage of infringement proceedings. This is not merely a theoretical possibility, it carries the power to pause the entire lawsuit.
The Power of the Stay
The most significant implication of this interpretation is the potential for indefinite delays. When an invalidity application is filed with the EUIPO, Article 132(1) of the EUTMR generally requires the national court to stay (pause) the infringement proceedings until the validity issue is resolved.
This creates a precarious situation for rights holders. A defendant who anticipates losing on the merits of an infringement claim can choose not to fight in court initially. Instead, they can let the case proceed and then file for invalidity with the EUIPO. If successful, the trademark could be invalidated, rendering the infringement suit moot.
The timeline for this process is extensive. An EUIPO decision can be appealed to the EUIPO Boards of Appeal, then to the General Court, and potentially to the Court of Justice of the European Union. This multi-tiered appeal process can span several years. During this time, the national infringement proceedings remain in limbo. For a business trying to enforce its brand or remove a competitor from the market, this delay can be commercially devastating, regardless of the eventual outcome.
Strategic Implications for Businesses
The divergence between EU law and certain national frameworks highlights a critical gap in procedural coordination. While some jurisdictions mandate concentrated litigation to ensure efficiency, the EU framework allows for parallel, fragmented proceedings. This flexibility benefits defendants by providing options, but it introduces uncertainty for rights holders.
Monitoring Must Be Proactive, Not Reactive
Traditional trademark monitoring often focuses on detecting new applications that mimic your brand. However, this case underscores that monitoring must also track existing legal challenges against your portfolio. If a competitor is actively litigating against you in national courts while simultaneously filing invalidity proceedings at the EUIPO, you are facing a coordinated attack designed to delay judgment and drain resources.
Businesses cannot assume that winning an infringement case will protect their trademark’s validity indefinitely. A valid registration is not immune to challenge, even after years of litigation have passed.
The "Special Grounds" Exception
The regulation does offer some protection against pure delay tactics. Courts may continue proceedings without a stay if there are "special grounds" for doing so. The Advocate General suggests this could include evidence that the EUIPO application is part of a strategy solely aimed at delaying the infringement action.
However, proving such intent is difficult. The threshold for what constitutes a "special ground" is expected to be interpreted narrowly to preserve the defendant’s right to choose their forum. This means that even weak invalidity claims can successfully halt enforcement proceedings.
Navigating the New Landscape
The upcoming judgment from the Court of Justice of the European Union will clarify whether this procedural choice remains available to defendants. If affirmed, it signals a shift in the strategic landscape of EU trademark litigation.
For intellectual property managers, the takeaway is clear: speed and precision are no longer enough. Litigation strategy must now account for the risk of parallel validity proceedings that can freeze enforcement efforts indefinitely. Companies should consider structuring their portfolio defenses and litigation budgets to withstand prolonged procedural battles, not just substantive legal arguments. The ability to challenge a mark at any time until final judgment is a powerful tool, one that rivals are increasingly likely to wield in complex commercial disputes.