PRELIMINARY NOTES FOR THE STUDY OF THE CONNECTION OF CAUSES IN EUROPEAN UNION TRADEMARK CASES IN LIGHT OF SUPREME COURT JUDGMENT No. 78/2025 —“ÚNICO”—

Abstract

This paper examines certain aspects of the connection of causes between infringement proceedings of an EU trademark and invalidation proceedings for that trademark. It will then be shown that the EU Trademark Regulation only addresses the connection involving an infringement proceeding and a cancellation proceeding for expiry or invalidity, the application for which was filed with the EUIPO prior to the infringement claim. A situation linking an infringement proceeding with a cancellation proceeding filed with the EUIPO after the infringement claim has been lodged does not constitute a case of connection of causes subject to Article 132.1 of the EU Trademark Regulation. An application for expiry or invalidity of the trademark filed with the EUIPO, considered as a whole, effectively constitutes the substantive defense against the infringement claim. Even if it is presented, processed and resolved  directly, that request must be functionally assimilated to a counterclaim, which does not mean that it must be classified and treated as a counterclaim, but it does imply that the expiration or nullity file subsequent to the infringement claim cannot have consequences on the continuity or paralysis of the ordinary processing of the infringement process that the counterclaim cannot
have, starting with the suspension of the infringement process.