The opposing party in this case is an English company that sued our client, a German company, before the Düsseldorf Regional Court for injunctive relief, information, damages, and reimbursement of expenses for trademark infringement. The opposing party (plaintiff) claimed that our client (defendant) had infringed its EU trademark “EVOLUTION”. If the plaintiff succeeds, the defendant (our client) is not only prohibited from using the word “EVOLUTION”, but our client would also have to pay relatively high damages.
We have advised our client to initiate invalidity proceedings before the European Union Intellectual Property Office (EUIPO) in order to have the EU trademark “EVOLUTION” cancelled on the grounds that its content is too descriptive and that it needs to be kept available to the general public. If this EU trademark is deleted from the register by the EUIPO, the plaintiff will have no basis for the action before the Düsseldorf District Court anymore and its action will be dismissed.
At the same time, we have requested the Düsseldorf District Court to stay the trademark infringement proceedings until the EUIPO (and possibly the General Court and the Court of Justice) have finally clarified whether the EU trademark “EVOLUTION” should be deleted from the register.
The Düsseldorf Higher Regional Court (OLG) (Case No. 2a O 11/16) agreed with our application for a stay of proceedings after an oral hearing. The plaintiff filed an immediate appeal against the stay order of the Regional Court in Düsseldorf with the Higher Regional Court of Düsseldorf, but without success. The OLG Düsseldorf (Case No. I-20 W 31/17) confirmed the decision of the Regional Court and considered the revocation proceedings before the EUIPO to have priority.
In the meantime, the EUIPO (ref. 000012483 C) decided on July 12th, 2017 that the EU trademark “EVOLUTION” is invalid in its entirety, i.e., it must be deleted from the EUIPO register. Appeals against this are still possible. By the way, the entire proceedings before the EUIPO were conducted in English. Our English pleadings were better received by EUIPO than the pleadings of the English lawyers of the trademark proprietor (= the applicant before the Düsseldorf District Court).
By now, the decision to cancel the EU trademark “EVOLUTION” has become final. The plaintiff’s EU trademark has already been deleted from the register. We have applied with the court in Düsseldorf that the plaintiff shall bear all costs of the proceeding. By now, the court in Düsseldorf has granted our client full compensation of all its costs and expenses. Thus, all costs of the proceedings have to be borne by the plaintiff (opposite party).