{"id":135263,"date":"2021-07-06T12:15:16","date_gmt":"2021-07-06T16:15:16","guid":{"rendered":"https:\/\/ipwatchdog.com\/?p=135263"},"modified":"2021-07-17T12:36:29","modified_gmt":"2021-07-17T16:36:29","slug":"inta-submits-comments-cjeu-non-challenge-clauses","status":"publish","type":"post","link":"https:\/\/ipwatchdog.com\/2021\/07\/06\/inta-submits-comments-cjeu-non-challenge-clauses\/id=135263\/","title":{"rendered":"INTA Submits Comments to CJEU on Non-Challenge Clauses"},"content":{"rendered":"
\u201cThe filing of a request for invalidation or revocation or an opposition in violation of a valid contractual non-challenge obligation constitutes an act of bad faith which results in an inadmissibility of the respective request before the EUIPO.\u201d \u2013 INTA amicus brief<\/p>\n<\/div>\n
<\/a>Filing a request for revocation of a trademark, despite a non-challenge clause in a trademark agreement, constitutes an act of bad faith\u2014according to an amicus submission<\/a> filed by INTA in a case pending before the Court of Justice of the EU (CJEU).<\/p>\n The German Federal Supreme Court has referred two questions to the CJEU in a dispute between two formerly related companies. (Case C-62\/21<\/a>, Leinfelder Uhren M\u00fcnchen.<\/em>) They had signed agreements in which the defendants in this case undertook not to attack the plaintiff\u2019s trademark, nor to assist a third party to do so.<\/p>\n However, a lawyer acting on behalf of the defendants subsequently filed revocation actions for non-use against the plaintiff\u2019s EU trademarks. In response, the plaintiff asked the German courts for an order requiring the defendants to instruct the lawyer to withdraw the revocation actions, and also for damages.<\/p>\n The Court\u2019s two questions concern essentially: (1) whether the provision, set out in the EUTM [EU Trade Mark] Regulation, that \u201cany natural or legal person and anybody having the capacity to sue and be sued\u201d may submit an application for revocation means that an undertaking not to file such an action is ineffective; and (2) should a final judgment in a Member State requiring a revocation action to be withdrawn be disregarded in any revocation action?<\/p>\n