In Stella Kunstofftechnik GmbH v OHIM  T-27/09 (unreported), the General Court (formerly the Court of First Instance) held that the revocation proceedings of The Office of Harmonization for the Internal Market (OHIM), which were based on an earlier mark, were not inadmissible simply because the earlier mark was being opposed.
Stella Kunstofftechnik held a Community trade mark (CTM) for the word STELLA in respect of containers and hand tools. Stella Pack SA subsequently applied to register a figurative mark containing the words STELLA PACK in respect of candles (Class 4), packaging (Classes 6 and 16) and certain “household” items such as rubber gloves, plastic cutlery etc., in Class 21. Kunstofftechnik opposed the application in respect of packaging and most of the goods in Class 21. Stella Pack then applied for Kunstofftechnik’s mark to be revoked for nonuse. The Cancellation Division found that STELLA had not been used for all the goods for which it was registered and ordered a partial revocation. Kunstofftechnik appealed to OHIM’s Fourth Board of Appeal, claiming that the application for revocation should have been dismissed as inadmissible, since there was already an opposition based on that mark that was still pending.
The Board of Appeal dismissed Kunstofftechnik’s appeal, finding inter alia that the opposition proceedings could at most be suspended, but that this would not affect the revocation proceedings. Kunstofftechnik appealed to the General Court.
The Court refused to accept that the opposition proceedings could influence in any way the admissibility or even the progress of revocation proceedings brought against the earlier mark, and consequently rejected Kunstofftechnik’s appeal.
The Court agreed that revocation proceedings initiated after opposition could give rise to suspension of the opposition proceedings. In the Court’s opinion, if the earlier mark was revoked, the opposition proceedings would be devoid of purpose.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 because, even if the opposition proceedings resulted in dismissal of the CTM application, there would be nothing to prevent the same application from being filed again once the earlier mark had been revoked.
Whilst it is difficult to argue with the outcome of this appeal, issue can be taken with the Court’s observation that there would be no advantage to a would-be opponent of a mark to bring an opposition without awaiting the outcome of revocation proceedings. This observation presupposes that the mark will be revoked: if it were not, the would-be opponent could have missed his opportunity, as an application can only be opposed during the period of three months following its advertisement in the official journal.