A counterclaim for revocation or for a declaration of invalidity may only be based on the
grounds for revocation or invalidity mentioned in this Regulation.
An EU trade mark court shall reject a counterclaim for revocation or for a declaration of
invalidity if a decision taken by the Office relating to the same subject matter and cause of
action and involving the same parties has already become final.
If the counterclaim is brought in a legal action to which the proprietor of the trade mark is
not already a party, he shall be informed thereof and may be joined as a party to the action
in accordance with the conditions set out in national law.
The EU trade mark court with which a counterclaim for revocation or for a declaration of
invalidity of the EU trade mark has been filed shall not proceed with the examination of
the counterclaim, until either the interested party or the court has informed the Office of
the date on which the counterclaim was filed. The Office shall record that information in
the Register. If an application for revocation or for a declaration of invalidity of the
EU trade mark had already been filed before the Office before the counterclaim was filed,
the court shall be informed thereof by the Office and stay the proceedings in accordance
with Article 132(1) until the decision on the application is final or the application is
Where an EU trade mark court has given a judgment which has become final on a
counterclaim for revocation or for a declaration of invalidity of an EU trade mark, a copy
of the judgment shall be sent to the Office without delay, either by the court or by any of
the parties to the national proceedings. The Office or any other interested party may
request information about such transmission. The Office shall mention the judgment in the
Register and shall take the necessary measures to comply with its operative part.
The EU trade mark court hearing a counterclaim for revocation or for a declaration of
invalidity may stay the proceedings on application by the proprietor of the EU trade mark
and after hearing the other parties and may request the defendant to submit an application
for revocation or for a declaration of invalidity to the Office within a time limit which it
shall determine. If the application is not made within the time limit, the proceedings shall
continue; the counterclaim shall be deemed withdrawn. Article 132(3) shall apply.