Case T-27/09

Stella Kunststofftechnik GmbH

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Revocation proceedings – Community word mark Stella – Earlier opposition proceedings based on that mark – Admissibility – Articles 50(1) and 55(1) of Regulation (EC) No 40/94 (now Articles 51(1) and 56(1) of Regulation (EC) No 207/2009))

Summary of the Judgment

Community trade mark – Surrender, revocation and invalidity – Application for revocation – Opposition proceedings already brought on the basis of the same mark – Admissibility

(Council Regulation No 40/94, Arts 42, 43(2), 50(1)(a) and 55(1)(a); Commission Regulation No 2868/95, Art. 1, Rule 18)

It is not apparent from the wording of Articles 50(1)(a), and 55(1)(a), of Regulation No 40/94 on the Community trade mark that opposition proceedings brought on the basis of a mark and still pending can influence in any way the admissibility or even the progress of revocation proceedings brought against that mark. Even if the provisions of Regulation No 2868/95 implementing Regulation No 40/94 and those of the Internal Guidelines of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), in the November 2007 version, concerning proceedings for revocation or for a declaration of invalidity and proof of use in the context of opposition proceedings may supplement the conditions laid down in Regulation No 40/94, they do not provide that an application for revocation of a mark is inadmissible on the ground that opposition proceedings based on that mark are still pending.

In addition, it is apparent from Regulation No 40/94 that opposition proceedings and revocation proceedings are two distinct and autonomous types of proceedings, each with their own effects, and that it is possible to entertain revocation proceedings irrespective of whether opposition proceedings based on the mark to which the application for revocation relates have been brought and are still pending. In that regard, the proceedings in question are covered by two different titles of Regulation No 40/94. Opposition is governed by Title IV, Section 4, of Regulation No 40/94, whereas revocation is governed by Title VI, Sections 2 and 4, of that regulation. Each of the two proceedings has their own purpose and effects. Opposition is designed to frustrate, under certain conditions, an application for registration of a mark due to the existence of an earlier mark and rejection of that opposition does not entail revocation of that mark. Such revocation can be brought about only where proceedings have been instituted for that purpose. This difference in purpose and effects explains why each type of proceedings has its own rules. Thus, in particular, whereas the opponent’s interest in initiating proceedings and the period of three months within which notice of the opposition must be given are amongst the conditions for admissibility of the opposition set out in Article 42 of Regulation No 40/94 and in Rule 18 of Regulation No 2868/95, Article 55(1)(a) of Regulation No 40/94, applicable to revocation proceedings, does not make any mention of an interest in bringing proceedings. Similarly, no time-limit applies for bringing revocation proceedings, except that it is necessary, in order to obtain revocation of a mark, to plead, under Article 50(1)(a) of Regulation No 40/94 and as is provided in Article 43(2) of that regulation applying to opposition, that within a continuous period of five years the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

Thus, the opportunity available to all to file an application for revocation on grounds of non-use of a mark is completely independent of any parallel opposition proceedings in which the Community trade mark to which the application for revocation relates is involved.

Revocation proceedings initiated after opposition has been raised can at most give rise to suspension of the opposition proceedings. Indeed, in the event that the earlier mark was revoked the opposition proceedings would be devoid of purpose. However, bringing opposition proceedings without awaiting the outcome of the revocation proceedings would not be of any advantage to the proprietor of the earlier mark cited in the opposition proceedings and to which the application for revocation relates. Even if the opposition proceedings resulted in dismissal of the Community trade mark application, there would be nothing to prevent the same application from being filed again once the earlier mark had been revoked.

(see paras 24, 26-27, 32-39)