CELEX: 62009TJ0027
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)

Grounds
Background
1. On 29 February 1996 the applicant, Stella Kunststofftechnik GmbH, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)). After rectification, the filing date was fixed as 22 July 1996, under Article 27 of Regulation No 40/94 (now Article 27 of Regulation No 207/2009) and Rule 9 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1).
2. The mark for which registration was sought is the word sign Stella.
3. The goods in respect of which registration was sought are in Classes 6, 8, 16, 20 and 21, of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 6: ‘Goods of metal, included in Class 6, especially containers, bottles, packings and closures and foils for wrapping and packaging, container and bottle closures, sealing caps, metal caps, tins and receptacles’;
– Class 8:’Hand tools and implements (hand-operated), especially hand-operated lever presses’;
– Class 16:’Paper, cardboard and goods of these materials, included in Class 16, especially containers and packings; packing material of plastic, included in Class 16, containers and packings of paper and plastic as well as of cardboard and plastic’;
– Class 20: ‘Goods, included in Class 20, of plastic, bottles, containers, packings and closures, closures for bottles and containers, sealing caps’;
– Class 21:’Containers and bottles of glass, of plastic and/or of a combination of glass and plastic’.
4. The mark was registered on 19 September 2001 as a Community trade mark (‘the mark at issue’).
5. On 11 May 2004 the intervener, Stella Pack S.A. (formerly Stella Pack sp. z o.o.), filed an application for a Community trade mark at OHIM under Regulation No 40/94.
6. The mark for which registration was sought is the figurative mark containing the element ‘stella pack’.
7. The goods in respect of which registration was sought are in Classes 4, 6, 16, 20 and 21 of the Nice Agreement and correspond to the following description:
– Class 4: ‘Candles’;
– Class 6: ‘Films of metal for reeling and packaging’;
– Class 16: ‘Films, large and small plastic bags for packaging (pouches or carrier bags); paper; large and small paper bags for packaging; rubbish bags of paper or plastic; paper coffee filters; paper table covers;
– Class 20: ‘Drinking straws of plastic’;
– Class 21: ‘Gloves for housework; gardening gloves; tableware of plastic, including mugs, plates, bowls; plastic cutlery; coffee filters (non-electric); toothpicks; skewers; stirrers; cups for ices (including specially moulded cups); clothes pegs; cloths, rags; sponges; mops’.
8. On 27 June 2005, the applicant filed a notice of opposition under Article 42(1) of Regulation No 40/94 (now Article 41(1) of Regulation No 207/2009) against registration of the figurative mark applied for by the intervener.
9. The opposition, based on the mark at issue, was against the registration of the mark applied for by the intervener in respect of goods in Classes 6, 16 and 21 of the Nice Agreement:
– Class 6: ‘Films of metal for reeling and packaging’;
– Class 16: all goods falling within this class apart from ‘paper table covers’;
– Class 21: ‘tableware of plastic, including mugs, plates, bowls; coffee filters, plastic cutlery, skewers, stirrers, cups for ices’.
10. On 22 December 2006, the intervener filed an application at OHIM pursuant to Articles 50(1)(a) and 55(1)(a) of Regulation No 40/94 (now Articles 51(1)(a) and 56(1)(a) of Regulation No 207/2009) for revocation of the mark at issue.
11. On 27 February 2008 the Cancellation Division, finding that the mark at issue had not been put to genuine use for certain goods, made an order revoking that mark, with effect from 22 December 2006, in respect of the following goods: ‘Goods of metal, included in Class 6, hand tools and implements (hand-operated), especially hand-operated lever presses in Class 8, paper, cardboard and goods of these materials, included in Class 16, in Class 16 and goods, included in Class 20, of plastic’. However, it maintained registration of the mark at issue for the other goods covered by that mark.
12. On 28 April 2008 the applicant filed a notice of appeal at OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Cancellation Division in its entirety. It claimed that the mark at issue had been used and also argued in essence that the application for revocation filed by the intervener against that mark should have been dismissed as inadmissible, since the applicant had already brought opposition proceedings based on that mark before OHIM against the figurative mark Stella pack, and those opposition proceedings were still pending.
13. By decision of 13 November 2008, notified to the applicant on 18 November 2008 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed that appeal.
14. As regards the admissibility of the appeal, the Board held that the appeal was partly inadmissible since the applicant had challenged the decision of the Cancellation Division in its entirety, although the Cancellation Division had dismissed the application for revocation of the mark at issue in respect of certain goods and its decision did not, to that extent, disadvantage the applicant.
15. As regards the substance of the case, the Board of Appeal held that since the Cancellation Division had partly dismissed the application for revocation by its decision, giving detailed grounds for so doing, and had held that in principle the mark at issue had been used in a way that ensured that rights were maintained for some of the goods registered, the applicant should not have merely reiterated that the mark had been used; it should have supplied evidence to show why the evidence it had provided earlier in order to demonstrate use should be held to be adequate to ensure that rights were maintained, including for those goods in respect of which it had been decided to revoke the mark at issue. According to the Board of Appeal, the applicant did not supply any evidence to that effect. Furthermore, the Board of Appeal stated that the applicant’s observations concerning the opposition proceedings it had brought before OHIM on 27 June 2005 were not relevant. According to the Board of Appeal, the opposition proceedings concerned could at most be suspended, but that would not be the case as regards the revocation proceedings.
Forms of order sought
16. The applicant claims that the Court should:
– annul the contested decision;
– order that the application for revocation should be dismissed as inadmissible or, in the alternative, after also annulling the decision of the Cancellation Division of 27 February 2008, suspend the decision concerning the application for revocation of 22 December 2006 until a final decision is given in the opposition proceedings it has brought;
– order the intervener to bear the costs, including those of the initial proceedings in this case, and those of OHIM.
17. OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
18. In support of its action, the applicant relies on two pleas in law. The first plea alleges that the Board of Appeal erred in law in wrongly rejecting its submissions seeking to prove genuine use of the mark at issue. The second plea alleges that the application for revocation was unlawful in so far as the Board of Appeal should have held that application to be inadmissible or should at least have suspended it, since it relates to a mark which has already been cited in opposition proceedings that have been brought before OHIM and are still pending.
First plea: an error of law in respect of genuine use of the mark at issue
19. It should be noted that under Article 44(1) of the Rules of Procedure of the Court, which applies to intellectual property matters by virtue of Articles 130(1) and 132(1) of those rules, applications must include a brief statement of the grounds relied on. It is settled case-law that although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (Case T‑183/03 Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION) [2004] ECR II‑3113, paragraph 11, and Joined Cases T‑350/04 to T‑352/04 Bitburger Brauerei  v OHIM – Anheuser-Busch (BUD, American Bud and Anheuser Busch Bud)  [2006] ECR II‑4255, paragraph 33).
20. In the present case, under the first plea, the applicant merely mentions articles of Regulation No 40/94 and certain provisions of OHIM’s Internal Guidelines, makes no more than a general reference to its statement of 2 April 2007 and to the annexes it lodged in the course of the proceedings before the Cancellation Division in order to demonstrate genuine use of the mark at issue for the goods in respect of which the Cancellation Division had ordered revocation of that mark. In those circumstances, in the light of the case-law cited in the preceding paragraph, this plea must be rejected as inadmissible.
Second plea: allegation that the application for revocation was unlawful
21. The applicant argues that before the intervener filed the application for revocation of the mark at issue the applicant itself had, on 27 June 2005, brought opposition proceedings before OHIM, citing that mark, against a trade mark registration procedure initiated by the intervener. Since those opposition proceedings were pending at the time the application for revocation was filed, the Cancellation Division should have dismissed that application as inadmissible or, failing that, stayed the proceedings until the earlier opposition proceedings had reached a final conclusion.
22. Under Article 50(1)(a) of Regulation No 40/94, the rights of the proprietor of the Community trade mark are to be declared to be revoked, on application to OHIM or on the basis of a counterclaim in infringement proceedings, if, 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. Under the same provision, no person may claim that the proprietor’s rights in a Community trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed. The commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use is to be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed.
23. Article 55(1)(a) of Regulation No 40/94, concerning applications for revocation, provides that an application for revocation may be submitted to OHIM by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which, under the terms of the law governing it, has the capacity in its own name to sue and be sued.
24. In the first place, with regard to those provisions, on which the applicant bases its plea, it should be observed, as OHIM correctly does, that it is not apparent from their wording 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.
25. Those provisions relate only to grounds for revocation and the conditions relating to the filing of the application at OHIM, irrespective of whether any other proceedings have been brought.
26. Furthermore, the applicant relies, in support of its plea, on the provisions of Regulation No 2868/95 and those of OHIM’s Internal Guidelines, 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.
27. Even assuming that those provisions and guidelines may supplement the conditions laid down in Regulation No 40/94, it should be noted that 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.
28. Rule 37 of Regulation No 2868/95, concerning applications for revocation or for a declaration of invalidity, merely sets out the conditions relating to the filing of such an application and, in particular, the information such an application must contain.
29. Similarly, it is not apparent from the wording of OHIM’s Internal Guidelines concerning cancellation proceedings, namely Part D, Section 2, of those Guidelines, in the November 2007 version, that proceedings for revocation of a mark are inadmissible or must be suspended where opposition proceedings based on the mark whose revocation is sought have been brought earlier and are still pending. In particular, paragraph 3.1.2 of those Guidelines, concerning genuine use, which the applicant cites, merely states that ‘the means of assessing [such] use are the same in cancellation proceedings as in opposition assessment of proof of use of [Community trade marks]’ and that ‘the detailed considerations in Part 6 of the opposition guidelines should be followed’.
30. Part 6 of the Guidelines, covering proof of use, in particular paragraph 4 concerning time of use, which the applicant also cites, merely states that according to Article 43(2) of Regulation No 40/94 (now Article 42(2) of Regulation No 207/2009), which concerns opposition proceedings, the obligation to provide proof of use requires that at the date of publication of the Community trade mark application the earlier registered mark has been registered for not less than five years. No mention is made of any possible effect that the opposition proceedings might have on revocation proceedings that would render the latter inadmissible or require that they be suspended until the former proceedings have ended.
31. Secondly, the applicant’s argument that the application for revocation of a mark cannot be dealt with until opposition proceedings brought earlier on the basis of that mark are concluded would be at odds with the broad logic of the provisions of Regulation No 40/94.
32. It is apparent from that regulation 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.
33. In that regard, it should be observed that 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 (now Title IV, Section 4, of Regulation No 207/2009), whereas revocation is governed by Title VI, Sections 2 and 4, of that regulation (now Title VI, Sections 2 and 4, of Regulation No 207/2009).
34. 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.
35. 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 (see Case T‑232/00 Chef Revival USA  v OHIM – Massagué Marín (Chef)  [2002] ECR II‑2749, paragraph 32), Article 55(1)(a) of Regulation No 40/94, applicable to revocation proceedings, does not, as OHIM points out, make any mention of an interest in bringing proceedings.
36. 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.
37. In the light of those considerations, the Board of Appeal was correct to hold, in paragraph 14 of the contested decision, that 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. The applicant’s line of argument that an application for revocation filed against a mark is inadmissible where opposition proceedings based on that mark have been brought and are still pending at the time that application is filed must therefore be rejected.
38. It must in addition be held that the Board of Appeal also did not err in law in considering, again in paragraph 14 of the contested decision, that revocation proceedings initiated after opposition has been raised could 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.
39. 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.
40. It follows from all of the foregoing that the applicant’s argument that the intervener’s filing of the application for revocation of the mark at issue is an abuse of rights because the opposition proceedings were still pending cannot be accepted.
41. Lastly, it should be added that the fact that proceedings for revocation of a mark are being entertained before opposition proceedings commenced earlier in relation to the same mark have been concluded cannot be challenged by the applicant on the ground that its right to equal treatment as the proprietor of a Community trade mark and its right to be heard have been infringed, as it claims in its application.
42. First, the applicant’s complaint in that regard is worded in terms that are too general for it to be understood clearly and precisely. It refers, without any real explanation, to several articles of Regulation No 40/94, namely, Article 15 (now Article 15 of Regulation No 207/2009), Article 43, and Articles 77 and 79 (now Articles 79 and 83 of Regulation No 207/2009), which concern use of Community trade marks, examination of opposition, notification of OHIM decisions and references to general principles. The same applies as regards the reference to Rule 69 of Regulation No 2868/95, which concerns notification of documents where there are several parties to the proceedings.
43. Secondly, even assuming that in its complaint the applicant is alleging infringement of the second sentence of Article 73 of Regulation No 40/94 (now the second sentence of Article 75 of Regulation No 207/2009), which provides that OHIM decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments, it must be noted that, under that provision, a Board of Appeal of OHIM may base its decision only on matters of fact or of law on which the parties have been able to set out their views (Case C‑447/02 P KWS Saat  v OHIM  [2004] ECR I‑10107, paragraph 42; Case T‑242/02 Sunrider  v OHIM (TOP)  [2005] ECR II‑2793, paragraph 59; and Case T‑168/04 L & D  v OHIM – Sämann (Aire Limpio)  [2006] ECR II‑2699, paragraph 115).
44. That provision lays down, in the Community trade mark law context, the general principle of the protection of the right to defend oneself (Case T‑320/03 Citicorp  v OHIM (LIVE RICHLY)  [2005] ECR II‑3411, paragraph 21, and Case T‑317/05 Kustom Musical Amplification  v OHIM (Shape of a guitar)  [2007] ECR II‑427, paragraph 26). According to that general principle of Community law, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known (Case 17/74 Transocean Marine Paint Association  v Commission  [1974] ECR 1063, paragraph 15; Case T‑34/00 Eurocool Logistik  v OHIM (EUROCOOL)  [2002] ECR II‑683, paragraph 21, and LIVE RICHLY , paragraph 22).
45. In addition, according to case‑law, the right to be heard extends to the factual and legal factors on which the decision-making act is based but not to the final position which the authority intends to adopt ( Aire Limpio , cited in paragraph 43 above, paragraph 116, and Shape of a guitar , cited in paragraph 44 above, paragraph 27). Accordingly, the Board of Appeal is not obliged to hear an applicant with regard to a factual assessment which forms part of its final decision (Case T‑458/05 Tegometall International  v OHIM – Wuppermann (TEK)  [2007] ECR II‑4721, paragraph 45).
46. It does not appear that in the present case the applicant was unable to set out its views on all the matters of fact or of law on which the contested decision is based.
47. As is apparent from paragraph 7 of the contested decision, which is not challenged by the applicant, the latter was able to set out its views before both the Cancellation Division and the Board of Appeal.
48. The second plea must therefore be dismissed as unfounded.
49.  It follows from all of the foregoing that the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s second and third heads of claim, which is challenged by OHIM.
Costs
50. Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
51. As the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
Operative part
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Stella Kunststofftechnik GmbH to pay the costs.