EU Trademark Validity: Advocate General Favors EUIPO Challenge Post-Infringement
Advocate General Andrea Biondi's opinion suggests defendants can challenge EU trademarks before the EUIPO even after infringement proceedings begin, potentially delaying litigation.
By Giovanni Sapere
3 min readHuman-Edited, AI-Assisted
A recent opinion from Advocate General Andrea Biondi to the Court of Justice of the European Union (CJEU) could significantly alter the strategy for challenging EU trademarks. The opinion addresses whether a defendant in an EU trademark infringement case, who did not initially file a counterclaim, can still seek a declaration of invalidity from the European Union Intellectual Property Office (EUIPO), and if this requires the infringement proceedings to be stayed [IPWatchdog](https://ipwatchdog.com/2026/10/08/challenging-validity-eu-trademark-outside-courtroom-cjeu-advocate-generals-approach/). This procedural question has substantial implications for the duration and complexity of trademark disputes across the EU.
The Core Issue of Trademark Validity
The central issue in Case C-392/25, Bodegas Sanviver v. Bodegas Vega Sicilia, revolves around the timing and method for challenging the validity of an EU trademark. Specifically, it asks if a defendant, facing an infringement action, can later apply for a declaration of invalidity with the EUIPO, even if they could have filed a counterclaim in court. Furthermore, it questions whether such a subsequent EUIPO application necessitates a stay of the ongoing infringement proceedings IPWatchdog. An EU trademark court is a national court designated to hear cases concerning EU trademarks, while the EUIPO is the official body responsible for registering and managing EU trademarks and designs.
“Behind what looks like a technical question of procedural coordination lies a decision that could change the strategic landscape of EU trademark litigation.”
— IPWatchdog
The Dispute: UNICO Trademark
The dispute began in July 2018 when Bodegas Vega Sicilia, owner of the EU word mark UNICO for wines, initiated infringement proceedings against Bodegas Sanviver. Sanviver was marketing vermouth under the sign “ÚNICO.” Instead of filing a counterclaim challenging UNICO's validity within the infringement case, Sanviver filed a separate application for a declaration of invalidity with the EUIPO in December 2018. The EUIPO Cancellation Division subsequently declared the UNICO mark invalid on absolute grounds IPWatchdog. The Spanish infringement proceedings continued, leading to a referral to the CJEU by the Alicante Court of Appeal after the Spanish Supreme Court took a different view on the stay of proceedings.
Spanish vs. EU Trademark Law
The complexity of this issue is highlighted by the contrast between Spanish national trademark law and the EU Trade Mark Regulation (EUTMR). Under Article 61 bis(5) of the Spanish Trademark Act, once an infringement action for a national trademark is brought, the defendant must challenge its validity via a counterclaim in court, not by an application to the Spanish Patent and Trademark Office (OEPM). This establishes a clear rule of procedural concentration IPWatchdog. In contrast, the EUTMR provides two distinct mechanisms for challenging an EU trademark's validity: an application before the EUIPO or a counterclaim before an EU trademark court. Crucially, the EUTMR does not explicitly state that filing an infringement action closes the EUIPO route, nor does it mandate that a defendant who could have filed a counterclaim but did not, loses the right to seek invalidity before the EUIPO.
Advocate General's Opinion and Implications
In his Opinion of September 3, 2026, Advocate General Andrea Biondi sided with the Spanish Supreme Court's interpretation. He concluded that the EUTMR establishes two distinct avenues for challenging EU trademark validity, and the EUIPO route remains open until the infringement proceedings result in a final judgment IPWatchdog. This means a defendant can file an application for a declaration of invalidity with the EUIPO even at a late stage of infringement litigation. The practical significance is considerable: such an application may require the EU trademark court to stay the infringement case. EUIPO invalidity proceedings can be lengthy, involving appeals to the EUIPO Boards of Appeal, the General Court, and potentially the CJEU, potentially delaying infringement judgments for several years.
What to Watch
The CJEU's final decision on Case C-392/25 will significantly shape the strategic landscape of EU trademark litigation. If the CJEU follows the Advocate General's opinion, it could empower defendants with greater flexibility in challenging trademark validity, but at the cost of potentially prolonged and complex legal battles IPWatchdog. This approach could lead to more instances where infringement proceedings are stayed pending the outcome of EUIPO invalidity actions, impacting the efficiency of trademark enforcement across the European Union.
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