EUTMs and EU Designs: Must infringement proceedings be stayed when an EUIPO cancellation application is filed later?

Article 132(1) of the EUTM Regulation 2017/1001 provides that an EU trade mark court before which an EUTM infringement action has been brought ‘shall stay the proceedings’ if an application for revocation or invalidity ‘has already been filed at the Office’, unless there are ‘special grounds’ for continuing the hearing. Article 130(1) of the EU Design Regulation 2026/715 contains an equivalent rule for infringement actions involving registered EU designs.

EU trade mark and design courts have generally understood these provisions to require a stay where the cancellation application was filed before the infringement action, absent ‘special reasons’ – a demanding threshold. To this writer’s knowledge, however, there was little discussion of whether the provisions also apply when the infringement action predates the cancellation action.

As early as 2002, in its MANPOWER judgment, the Austrian Supreme Court that the predecessor of Article 132(1) EUTMR did not apply in such circumstances. This followed so clearly from the wording of the provision that no reference to the Court of Justice was necessary.

However, this very question is now before the CJEU in two preliminary-ruling proceedings: Bodegas Sanviver, C-392/25, concerning EUTMs, referred by the second instance EUTM court in Alicante, Spain, and Elektrizace železnic Praha, C-616/25, concerning EU Designs, and referred by the Regional Court Banská Bystrica, Slovakia. This latter case concerns Article 99(1) of Regulation 6/2002, the predecessor of the current EU Design Regulation.

In Bodegas Sanviver, Advocate General Biondi delivered his opinion on 3 September 2026. This reference derives from a difference in opinion between the referring court and the Spanish Tribunal Supremo. This had annulled the previous decision of the referring court in the infringement proceedings because it had not stayed the proceedings. The Tribunal Supremo considered that Article 132(1) EUTMR had to be applied, the referring court considered otherwise.

To the surprise of many, also AG Biondi proposed that Article 132(1) EUTMR should apply irrespective of whether the EUIPO cancellation action was filed before or after the infringement action. In his view, the word “already” need not refer to the time at which the infringement action was brought; it may instead could refer to the time at which the court decides whether to stay the proceedings.

This broad interpretation of Article 132(1) EUTMR could create serious difficulties for the enforcement of EUTMs. Moreover, it does not appear to reflect the legislative rationale underlying the provision, which was to strike a fair balance between these related actions.

First, Article 132(1) applies irrespective of who filed the cancellation action: it is not limited to applications brought by the defendant. On the AG’s interpretation, an EUTM court could therefore be required—at any stage and of its own motion—to stay infringement proceedings merely because a third party applied to cancel the EUTM. Such a result sits uneasily with the principle that the parties are free to determine the subject matter of their dispute.

Second, Article 132(2) addresses the converse situation: where cancellation proceedings are pending before the EUIPO and a counterclaim concerning the validity of the same mark has already been brought before an EU trade mark court, the EUIPO must stay its proceedings absent special grounds. The logical consequence of the AG’s reading of Article 132(1) would be that the EUIPO must also stay cancellation proceedings whenever a counterclaim is subsequently brought in infringement proceedings anywhere in the EU. That can hardly have been the legislature’s intention.

This is not to suggest that infringement proceedings must not be stayed when the validity of the EUTM is challenged before the EUIPO after those proceedings have commenced. However, this question should be determined by the applicable national rules of procedure. These apply under Article 129(3) as the Regulation does not govern that situation.

Those rules will generally leave the decision to the court’s discretion. Relevant considerations should include, in particular, the cancellation application’s prima facie prospects of success and the stage that the infringement proceedings have reached.

The Court of Justice’s answers in Bodegas Sanviver and Elektrizace železnic Praha will be significant for the interpretation of the stay provisions and for the practical enforcement of EUTMs and registered EU designs more generally.