Adobe Systems Inc v Netcom Distributors and Ors [2012] EWHC 1087 (Ch) (24 February 2012)

Adobe Systems Inc v Netcom Distributors and Ors [2012] EWHC 1087 (Ch) (24 February 2012)

A national court may only entertain a counterclaim for revocation of a Community trade mark for non-use if the counterclaim, if successful, would constitute a defence to the infringement claim; otherwise, the national court lacks jurisdiction and such matters should be left to OHIM.

Citation
[2012] EWHC 1087 (Ch)
Parties
Claimant: Adobe Systems Inc; Defendants: Netcom Distributors and Ors
Jurisdiction
England and Wales
Judgment Date
24 February 2012
Procedural Posture
Trade Mark Infringement and Counterclaim for Revocation / Interlocutory Application on Jurisdiction to Entertain Counterclaim
Outcome
Counterclaim for revocation of Community trade mark for non-use struck out for want of jurisdiction.
Legal Topics
Community Trade Mark Regulation, Jurisdiction of National Courts, Counterclaims for Revocation, Non Use of Trade Marks
Intellectual Property Trade Marks Community Trade Mark Regulation Jurisdiction of National Courts Counterclaims for Revocation Non Use of Trade Marks

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Parties

Adobe Systems Inc

Claimant

Netcom Distributors and Ors

Defendants

Procedural Posture

Trade Mark Infringement and Counterclaim for Revocation / Interlocutory Application on Jurisdiction to Entertain Counterclaim

Legal Issues

  1. 1 Whether a national court has jurisdiction to entertain a counterclaim for revocation of a Community trade mark for non-use when the revocation does not go to the defence of the infringement claim

Ratio Decidendi

A national court may only entertain a counterclaim for revocation of a Community trade mark for non-use if the counterclaim, if successful, would constitute a defence to the infringement claim; otherwise, the national court lacks jurisdiction and such matters should be left to OHIM.

Court Disposition

Counterclaim for revocation of Community trade mark for non-use struck out for want of jurisdiction.

Orders

  • Strike out provisions in the counterclaim seeking revocation of the Community trade mark for non-use.