Counter-Action for Invalidity of a Community Trade Mark

The basis of this case (OGH 4 Ob 98/14m "Feeling") was that as a defence against the assertion of an infringement of the Community Trade Mark "Feeling" in Austria a counter-action for revocation because of non-use and for invalidity because of a bad faith application was lodged. But before that an action for invalidity has been filed before OHIM by a third party on the basis of earlier national rights. This invalidity action was successful in two instances. But the appeal decision was not yet in legal force at the time of the end of the procedure in the first instance in Austria, so that it did not yet have any binding effect. Accordingly, the first instance court had to decide the counter claim. It affirmed non-use and bad faith and, therefore, it upheld the counter-claim. The appeal court consented.

The extraordinary appeal to the Austrian Supreme Court (OGH) was not permissible and therefore rejected because there was no reason for complaint. It was a fact that the appeal decision of OHIM concerning the invalidity had come into legal force during the procedure before the lower courts and that the CTM "Feeling" had been cancelled. A later decision of the Austrian courts can therefore no longer have any legal effect (a trade mark already declared invalid cannot be declared invalid again). Therefore, a decision on the counter-claim for revocation or invalidity no longer interferes with the legal sphere of the (former) owner so that there is no reason for complaint.

Of special interest here is the objection of the plaintiff that as a consequence of the successful declaration of invalidity on the basis of older national rights according to Art 112 CTMR a continuation of the trade mark by conversion into an Austrian national mark would be possible - which lies in his legal sphere - while with a declaration of invalidity because of bad faith that is not possible. Whether such a conversion is possible results from the decision which comes first in legal force with which also the term for the conversion starts. When this term has passed - as was here the case - the original priority is lost anyway. (If the CTM had been converted into an Austrian National mark the decision on the invalidity of the CTM would also not have any legal effect on that Austrian mark - a later declaration on the (non-)allowability of such a conversion on the basis of possible different invalidity grounds is not possible). Therefore a decision on the counter-claims after the decision of invalidity of the plaintiff's CTM has entered into legal force has no consequence whatsoever on the (former) trade mark owner.