Opposition and revocation proceedings are autonomous, says General Court

European Union
In Stella Kunststofftechnik GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-27/09, December 10 2009), the General Court has refused to annul a decision of the Fourth Board of Appeal of OHIM in which the latter had partially revoked the trademark STELLA on the grounds of non-use.
In 2001 Stella Kunststofftechnik GmbH registered the word mark STELLA as a Community trademark (CTM) for a broad list of goods in Classes 6, 8, 16, 20 and 21 of the Nice Classification. In May 2004 Stella Pack SA filed an application for the registration of the figurative mark STELLA PACK as a CTM for goods in Classes 4, 6, 16, 20 and 21. In June 2005 Stella Kunststofftechnik lodged an opposition against the registration of STELLA PACK on the basis of its CTM registration for STELLA. Stella Kunststofftechnik's registration was less than five years old and, therefore, was not subject to the use requirement under Article 43(2) of the Community Trademark Regulation (40/94) (now Article 42(2) of the Community Trademark Regulation (207/2009)).
Before a decision was reached in the opposition proceedings, Stella Pack filed a request for the cancellation of Stella Kunststofftechnik’s STELLA mark. The cancellation action was filed in December 2006 - the STELLA mark was thus more than five years old and was subject to the use requirement under Article 43(2).
In February 2008 the Cancellation Division of OHIM found that the STELLA mark had not been put to genuine use for certain goods in Classes 6, 8, 16 and 20 and revoked the mark in respect of those goods. However, it maintained the registration of the mark for the other goods.

Stella Kunststofftechnik appealed the decision of the Cancellation Division in its entirety. It claimed that:

  • the mark at issue had been put to genuine use; and
  • Stella Pack's application for revocation should have been dismissed as inadmissible due to the pending opposition proceedings.
The Fourth Board of Appeal of OHIM dismissed the appeal, holding that Stella Kunststofftechnik had not provided evidence of use. Furthermore, the board stated that while the opposition proceedings could at most be suspended, the revocation proceedings could not. Stella Kunststofftechnik appealed to the General Court.
Before the court, Stella Kunststofftechnik alleged that:
  • the board had erred in rejecting its submissions seeking to prove genuine use of the STELLA mark; and
  • the application for revocation was unlawful.
The court first held that Stella Kunststofftechnik had made no more than a general reference to its statements and to the annexes lodged during the course of the cancellation proceedings in order to demonstrate genuine use of the mark at issue. The court pointed out that a general reference to other documents cannot compensate the failure to set out the essential elements of the legal argument. Stella Kunststofftechnik's first claim was thus rejected.

Second, the court noted that opposition and revocation proceedings are two distinct and autonomous types of proceedings, each with their own purpose and effects. According to the court, it did not appear that Stella Kunststofftechnik was unable to set out its views on all the matters of fact or law on which the contested decision was based. As a result, the court rejected Stella Kunststofftechnik’s claim that the application for revocation was unlawful.
The decision shows that it is possible to bring cancellation proceedings irrespective of whether opposition proceedings based on the mark to which the application for revocation relates are still pending. 
Peter Gustav Olson, MAQS Law Firm, Copenhagen 

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