Legal Updates

Intellectual Property Law – Trade Mark Law – Community Trade Mark – Opposition – Revocation – Abuse of Process

In the European Court of Justice Decision in Stella Kunststofftechnik GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2010] Case T-27/09, the ECJ held that if there were opposition proceedings pending against a trade mark it did not preclude a third party bringing revocation proceedings to cancel a trade mark registration. The ECJ held that revocation and opposition proceedings were distinct and autonomous proceedings.

The trade mark 'STELLA' was registered as a Community Trade Mark in respect of classes 6, 8, 16, 20 and 21 in 2001. An Intervener filed a Community Trade Mark application in 2004 for a device mark 'STELLA PACK' in respect of classes 4, 6, 16, 20 and 21. A notice of opposition was filed against the application for STELLA PACK.

The Intervener filed a revocation application for cancellation of the Community Trade Mark Registration 'STELLA'. It was held that the trade mark ‘STELLA’ had not been put to genuine use and an order was made for revocation of the trade mark in respect of classes 6, 8, 16 and 20. The applicant appealed against this decision on the basis that the trade mark ‘STELLA’ had been used and in any event the revocation application by the Intervener ought to have been dismissed as inadmissible, because the opposition proceedings against the mark STELLA PACK were still pending. The appeal was dismissed and the applicant appealed.

The appeal was based on articles 50(1)(a) and 55(1)(a) of Council Regulation (EC) No 40/94 claiming that as the opposition proceedings were pending at the same time as the revocation proceedings and therefore the revocation application ought to have been dismissed as inadmissible or the application stayed until the earlier opposition proceedings had been decided.

The appeal was dismissed. It was held that:-

  • Under articles 50(1)(a) and 55(1)(a) of Council Regulation (EC) No 40/94 it was not apparent whether opposition proceedings brought against a trade mark that was still pending could influence in any way the admissibility or even the progress of revocation proceedings brought against that said mark.
  • Articles 50(1)(a) and 55(1)(a) of Council Regulation (EC) No 40/94 concerned grounds for revocation only.
  • Furthermore, under the Office for Harmonisation for the Internal Market's Internal Guidelines, it was not apparent from the wording of the Internal Guidelines whether proceedings for revocation of a trade mark were inadmissible or had to be suspended when opposition proceedings had been brought earlier and were still pending.
  • It was apparent from the Regulation that opposition proceedings and revocation proceedings were two distinct and autonomous types of proceedings, each with their own effects. It was possible to entertain revocation proceedings irrespective of whether opposition proceedings based on that mark to which the application for revocation related had been brought and were still pending).
  • In the instant case, as the opportunity was available to all to file an application for revocation on grounds on non-use of a mark independently of any parallel opposition proceedings relating to the same mark, the application for revocation filed against the mark was admissible and not an abuse of process.

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© RT COOPERS, 2010. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.



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