Adobe Systems Inc v Netcom Distributors and Ors

A national court does not have jurisdiction to entertain a counterclaim for revocation of a Community trade mark for non-use where the counterclaim does not go to the defence of the infringement claim. The scheme of the Regulation only allows counterclaims that, if successful, would constitute a defence to the infringement claim.

Parties: Claimant: Adobe Systems Inc; Defendants: Netcom Distributors and Ors
Jurisdiction: England and Wales
Judgment Date: 24 February 2012
Procedural Posture: Intellectual Property Trade Mark Infringement / Interlocutory Application Within Ongoing Proceedings
Outcome: Counterclaim for revocation 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

Intellectual Property Trade Mark Infringement / Interlocutory Application Within Ongoing Proceedings

Legal Issues

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

Ratio Decidendi

Court Disposition

Counterclaim for revocation struck out for want of jurisdiction

Orders

Provisions in the counterclaim seeking to revoke the Community trade mark for non-use are struck out.