ORDER OF THE COURT (Eighth Chamber)

4 June 2020 ( )

(Application for revision — Article 159 of the Rules of Procedure of the Court — Application concerning an order made pursuant to Article 181 of the Rules of Procedure — Conditions — No previously unknown facts — Inadmissibility)

In Case C‑118/18 P-REV III,

APPLICATION for revision of the order of 28 June 2018, Hochmann Marketing v EUIPO (C‑118/18 P, not published, EU:C:2018:522), brought on 25 September 2019,

Hochmann Marketing GmbH, formerly Bittorrent Marketing GmbH, established in Neu-Isenburg (Germany), represented by J. Jennings, Rechtsanwalt,

applicant for revision,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO), represented by M. Capostagno, acting as Agent,

defendant at first instance,

Rainberry Inc., formerly BitTorrent Inc., established in San Francisco (United States), represented by M. Kinkeldey, S. Clotten, S. Brandstätter and C. Schmitt, Rechtsanwälte,

intervener at first instance,

THE COURT (Eighth Chamber),

composed of L.S. Rossi (Rapporteur), President of the Chamber, J. Malenovský and N. Wahl, Judges,

Advocate General: G. Hogan,

Registrar: A. Calot Escobar,

having regard to the written procedure,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

makes the following

Order

1 By its application, Hochmann Marketing GmbH, formerly Bittorrent Marketing GmbH, has made, pursuant to Article 44 of the Statute of the Court of Justice of the European Union, an application for revision of the order of 28 June 2018, Hochmann Marketing v EUIPO (C‑118/18 P, not published, EU:C:2018:522; ‘the contested order’).

2 By that order, the Court, pursuant to Article 181 of its Rules of Procedure, dismissed, as being, in part, manifestly inadmissible and, in part, manifestly unfounded, the appeal brought by Hochmann Marketing against the judgment of the General Court of the European Union of 12 December 2017, Hochmann Marketing v EUIPO — BitTorrent (bittorrent) (T‑771/15, not published, EU:T:2017:887).

Legal context

3 Article 39 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), headed ‘Claiming seniority of a national trade mark in an application for an EU trade mark or subsequent to the filing of the application’, provides in paragraph 1 thereof:

‘The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade mark for registration as an EU trade mark for goods or services which are identical with or contained within those for which the earlier trade mark has been registered, may claim for the EU trade mark the seniority of the earlier trade mark in respect of the Member State in or for which it is registered.’

4 Chapter XI of that regulation, on the effects of EU trade marks on the laws of the Member States, contains a Section 3, headed ‘Conversion into a national trade mark application’, which is formed of Articles 139 to 141 of that regulation. Article 139, headed ‘Request for the application of national procedure’, provides:

‘1. The applicant for or proprietor of an EU trade mark may request the conversion of his EU trade mark application or EU trade mark into a national trade mark application:

(a) to the extent that the EU trade mark application is refused, withdrawn, or deemed to be withdrawn;

(b) to the extent that the EU trade mark ceases to have effect.

2. Conversion shall not take place:

(a) where the rights of the proprietor of the EU trade mark have been revoked on the grounds of non-use, unless in the Member State for which conversion is requested the EU trade mark has been put to use which would be considered to be genuine use under the laws of that Member State;

…

3. The national trade mark application resulting from the conversion of an EU trade mark application or an EU trade mark shall enjoy in respect of the Member State concerned the date of filing or the date of priority of that application or trade mark and, where appropriate, the seniority of a trade mark of that State claimed under Articles 39 or 40.

…’

5 Under Article 140 of that regulation, headed ‘Submission, publication and transmission of the request for conversion’:

‘…

3. The Office shall check whether the conversion requested fulfils the conditions set out in this Regulation … If the conditions governing the request are not fulfilled, the Office shall notify the applicant of the deficiencies. If the deficiencies are not remedied within a period to be specified by the Office, the Office shall reject the request for conversion. Where Article 139(2) applies, the Office shall reject the request for conversion as inadmissible only with respect to those Member States for which conversion is excluded under that provision. …

…

5. Where the request for conversion complies with the requirements referred to in paragraph 3 of this Article, the Office shall transmit the request for conversion and the data referred to in Article 111(2) to the central industrial property offices of the Member States, including the Benelux Office for Intellectual Property, for which the request has been found admissible. The Office shall inform the applicant of the date of transmission.

…’

The background to the application for revision

6 On 6 June 2003, Hochmann Marketing filed an application for registration of the word sign ‘bittorrent’ as an EU trade mark with the European Union Intellectual Property Office (EUIPO). On 5 August 2003, that company also applied to the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office, Germany) for registration of the same word mark bittorrent.

7 On 8 June 2006, EUIPO registered that sign as an EU trade mark.

8 On 24 June 2011, the intervener at first instance, Rainberry Inc., formerly BitTorrent Inc., filed an application for revocation of that mark with EUIPO, based on the lack of genuine use in the European Union for a continuous period of five years. In parallel, Rainberry also filed an application for revocation of the corresponding German trade mark before the Landgericht Berlin (Regional Court, Berlin, Germany).

9 On 21 November 2011, namely the last day of the time limit set by EUIPO for that purpose, Hochmann Marketing replied to the request to submit evidence of genuine use of the EU mark by sending a letter, by fax, which contained a ‘list of evidence’ referring to ‘supporting documents’ in an annex. Those documents had, however, not been attached to that letter and were received by post only three days after the expiry of the time limit referred to above.

10 By decision of 24 September 2013, EUIPO’s Cancellation Division upheld the application for revocation of the EU trade mark.

11 On 19 November 2013, Hochmann Marketing lodged an appeal with EUIPO against the decision of the Cancellation Division. The Fifth Board of Appeal of EUIPO, having found that the party applying for revision had submitted no relevant evidence to the Cancellation Division within the time limit specified, dismissed the appeal on the ground that genuine use had not been proven. Nevertheless, for the sake of completeness, it assessed the evidence produced out of time, including that submitted to it, and found that it did not demonstrate use of the mark at issue.

12 By decision of 31 August 2015, that Board of Appeal held that that evidence did not demonstrate use of the mark at issue and, as a result, the EU mark had to be revoked with effect from 24 June 2011.

13 The application for revocation of the German mark bittorrent, filed in parallel by Rainberry before the national court was, by contrast, rejected. The decision granting the application, made on 19 November 2013 by the Landgericht Berlin (Regional Court, Berlin) was reversed by decision of 15 April 2015 of the Kammergericht Berlin (Higher Regional Court, Berlin, Germany), which found that, as regards the four services covered by the German mark bittorrent, that mark had been used to an extent that justified maintaining the rights in respect of that mark. The decision of the Kammergericht Berlin (Higher Regional Court, Berlin) was subsequently confirmed by decision of the Bundesgerichtshof (Federal Court of Justice, Germany) of 29 June 2017, and therefore became definitive.

14 For its part, the action brought before the General Court against the decision of the Board of Appeal of EUIPO of 31 August 2015 revoking the EU mark was dismissed by the judgment of the General Court of 12 December 2017, Hochmann Marketing v EUIPO — BitTorrent (bittorrent) (T‑771/15, not published, EU:T:2017:887).

15 Hochmann Marketing then brought an appeal seeking to have that judgment set aside, in support of which it raised four grounds of appeal, alleging infringement of Article 51(1)(a) and Article 76 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1), on the basis of an alleged failure to take account of the evidence.

16 For the reasons given in points 8, 9, 11, 12, 17, 18, 21, 22 and 25, respectively, of Advocate General Kokott’s Position, cited in paragraph 5 of the contested order, and on the ground set out in paragraph 6 of that order, the Court, by that order, dismissed that appeal as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

17 On 27 September 2018, on the basis of the abovementioned judgment of the Kammergericht Berlin (Higher Regional Court, Berlin) finding that there had been genuine use of a German mark identical to the EU mark at issue, Hochmann Marketing applied to convert that mark, under Article 139(2)(a) of Regulation 2017/1001, into two applications for German and Austrian national trade marks, respectively.

18 On the same day, Hochmann Marketing also submitted an initial application for revision of the contested order. By order of 8 May 2019, Hochmann Marketing v EUIPO (C‑118/18 P‑REV, not published, EU:C:2019:396), that application was declared inadmissible under Article 159(5) of the Rules of Procedure.

19 By decision of 12 March 2019, EUIPO took the view that the request for conversion submitted by Hochmann Marketing satisfied the conditions set out in Regulation 2017/1001 and forwarded it to the Österreichische Patentamt (Austrian Patents Office, Austria) and to the German Patent and Trade Mark Office, in accordance with Article 140(5) of that regulation. Subsequently, those offices registered the respective national trade mark applications with retroactive effect from the date of filing of the application for the EU trade mark that had been revoked, namely 6 June 2003, pursuant to Article 139(3) of the regulation.

20 On 12 May 2019, Hochmann Marketing filed two applications for EU trade marks with EUIPO, together with two claims of seniority, within the meaning of Article 39(1) of Regulation 2017/1001. By those claims, Hochmann Marketing sought to claim, for the EU mark, the seniority of the identical earlier national trade marks registered with retroactive effect in Germany and Austria.

21 On 18 June 2019, Hochmann Marketing submitted a second application for revision of the contested order. By order of 16 January 2020, Hochmann Marketing v EUIPO (C‑118/18 P‑REV II, not published, EU:C:2020:11), that application was declared inadmissible under Article 159(5) of the Rules of Procedure.

22 By decision of 31 July 2019, addressed to Hochmann Marketing and the Austrian Patents Office, EUIPO acknowledged that it had made a manifest error by finding that the request for conversion of the EU mark into an Austrian trade mark application was admissible, since the judgment handed down on 15 April 2015 by the Kammergericht Berlin (Higher Regional Court, Berlin), on the basis of which that request was declared admissible, concerned the use of the mark in question in Germany only and had not identified any genuine use of that mark in Austria. As a result, by the same decision, EUIPO revoked its decision of 12 March 2019 that that request was admissible.

23 By a second decision of the same day, EUIPO informed Hochmann Marketing and the German Patent and Trade Mark Office that the class of services in respect of which the request for conversion of the EU mark into a German trade mark application had been declared admissible was different, in part, to that covered by the EU mark in question, with the result that the conversion would have to be limited to the services covered by the latter only. Consequently, by the same decision, EUIPO rectified the list of services concerned by that conversion.

24 On 25 September 2019, Hochmann Marketing lodged the present application for revision of the contested order.

Forms of order sought by the parties before the Court of Justice

25 Hochmann Marketing claims that the Court should:

– open the revision procedure in respect of the contested order;

– set aside the judgment of the General Court of 12 December 2017, Hochmann Marketing v EUIPO — BitTorrent (bittorrent) (T‑771/15, not published, EU:T:2017:887), annul the decision of the Fifth Board of Appeal of EUIPO of 31 August 2015 in Case R 2275/2013-5 and reject the application for revocation filed by the intervener at first instance;

– in the alternative, set aside that judgment and refer the case back to the General Court;

– order the other parties to the proceedings to pay the costs; and

– order that the original of the judgment in the application for revision be annexed to the original of the contested order and that a note be made of the judgment in the application for revision in the margin of the original of the contested order.

26 EUIPO contends that the Court should:

– dismiss the application for revision as inadmissible; and

– order Hochmann Marketing to pay the costs incurred by EUIPO.

27 Rainberry contends that the Court should:

– dismiss the application for revision as inadmissible and unfounded; and

– order Hochmann Marketing to pay the costs.

The application for revision

Arguments of the parties

28 Hochmann Marketing bases its application for revision on four facts.

29 In the first place, it claims that the revoked EU mark was ‘reincarnated’ by the combined effect of (i) its conversion into Austrian and German national marks, in accordance with Article 139 of Regulation 2017/1001, with retroactive effect from the date of filing of the application for registration of the EU mark in question, namely 6 June 2003, and (ii) the subsequent filing of new applications for registration as an EU mark of a mark identical to the national marks resulting from that conversion along with a claim of seniority in respect of those national marks within the meaning Article 39(1) of that regulation. It considers that that ‘reincarnation’ had the effect of restoring the situation as it stood prior to the revocation of the EU mark in question, as though the Court had, in the contested order, found the genuine use of that mark to have been proven. The new EU mark thus registered would be legally equivalent to the mark revoked.

30 In the second place, Hochmann Marketing highlights a position taken by EUIPO, contained in its written observations in Case C‑118/18 P-REV II, that the procedure for converting an EU mark into a national mark is a purely administrative procedure and EUIPO’s examination of the conversion request is limited to ensuring that the procedural requirements for admissibility have been complied with, with the result that EUIPO cannot make a fully autonomous decision in this procedure.

31 In the third place, Hochmann Marketing claims that EUIPO’s decision of 31 July 2019, by which it revoked its decision of 12 March 2019 that the request for conversion of the EU mark in question into an Austrian trade mark application was admissible, was taken arbitrarily following the submission of the second application for revision of the contested order in order to ‘provide legal advantages’ for EUIPO when that application was considered by the Court.

32 In the fourth place, Hochmann Marketing claims that, when correcting the class of services concerned by the conversion of the EU mark at issue into a German trade mark application in the second decision of 31 July 2019, EUIPO deliberately falsified the list of services covered by that EU mark, as recorded in the EU Trade Marks Register, in order to demonstrate to the German Patent and Trade Mark Office that it had taken into account the judgment of the Kammergericht Berlin (Higher Regional Court, Berlin).

33 Hochmann Marketing takes the view, in essence, that those facts demonstrate that the EU trade mark regime is not a completely autonomous system, with its own objectives and rules, in relation to national trade mark regimes. It is apparent from those facts that a single decision made by a national court is sufficient to demonstrate genuine use of an EU mark throughout the European Union.

34 It follows that the Court was wrong to rule, in the contested order, that the decision of a national court concerning the genuine use of a national mark, such as the judgment of the Kammergericht Berlin (Higher Regional Court, Berlin), cannot, in the context of the assessment of genuine use of an EU trade mark, bind EUIPO or replace EUIPO’s assessment of the evidence, even if the national mark is identical to the EU trade mark. Therefore, the Court was wrong to reject as manifestly unfounded the third ground of appeal, alleging failure on the part of EUIPO and the Courts of the European Union to take that judgment into account when assessing whether the EU trade mark at issue had been put to genuine use.

35 EUIPO and Rainberry contend that the application for revision should be dismissed as inadmissible.

Findings of the Court

36 In accordance with Article 44 of the Statute of the Court of Justice of the European Union and Article 159(1) of the Rules of Procedure, an application for revision of a decision may be made only on discovery of a fact which is of such a nature as to be a decisive factor and which, when the judgment was delivered or the order served, was unknown to the Court and to the party claiming the revision.

37 In addition, pursuant to Article 159(5) of the Rules of Procedure, in the event that an application for revision is made, without prejudice to its decision on the substance, the Court, after hearing the Advocate General, is to give in the form of an order its decision on the admissibility of the application, having regard to the written observations of the parties.

38 According to the Court’s settled case-law, revision is not an appeal procedure but an exceptional review procedure that allows the authority of res judicata attaching to a final judgment or to an order made pursuant to Article 181 of the Rules of Procedure to be called into question on the basis of the findings of fact relied upon by the Court. In particular, revision presupposes the discovery of elements of a factual nature which existed prior to the judgment or the order and which were unknown at that time to the Court which delivered the judgment or the order as well as to the party applying for revision and which, had the Court been able to take them into consideration, could have led it to a different determination of the proceedings (see, to that effect, orders of 20 May 2010, Petrides v Commission, C‑64/98 P‑REV, not published, EU:C:2010:279, paragraph 12, and of 16 January 2020, Hochmann Marketing v EUIPO, C‑118/18 P‑REV II, not published, EU:C:2020:11, paragraph 28).

39 The Court has therefore held that, in the light of the exceptional nature of the revision procedure, the conditions governing the admissibility of an application for revision are to be interpreted strictly (judgment of 2 April 2009, Yedaş Tarim ve Otomotiv Sanayi ve Ticaret v Council and Commission, C‑255/06 P‑REV, not published, EU:C:2009:212, paragraph 17, and order of 16 January 2020, Hochmann Marketing v EUIPO, C‑118/18 P‑REV II, not published, EU:C:2020:11, paragraph 29).

40 In the present case, Hochmann Marketing invokes four facts, which, in its view, are of such a nature as to have a decisive influence on the contested order and were unknown to the Court and to the party claiming the revision of that order, for the purposes of Article 159(1) of the Rules of Procedure.

41 The first fact relates to the alleged ‘reincarnation’ of the revoked EU mark into a new identical mark, as a result of EUIPO’s decision of 12 March 2019, by which it declared admissible the request for conversion of the EU mark at issue into two national trade mark applications, for Austria and Germany, with retroactive effect from the date of filing of the application for registration of that EU mark, namely 6 June 2003, followed by the filing, on 12 May 2019, of two applications for registration as an EU trade mark of two marks identical to the national marks resulting from that conversion, along with a claim of seniority in respect of those national marks. The second fact relates to a position taken by EUIPO, contained in its written observations submitted on 27 July 2019 in Case C‑118/18 P-REV II. The third fact concerns the revocation by EUIPO, on 31 July 2019, of the decision on the admissibility of the request for conversion of the EU mark at issue into an Austrian trade mark application. Lastly, the fourth fact concerns the rectification of the class of services concerned by the conversion of that EU mark into a German trade mark application made by EUIPO in its decision of 31 July 2019.

42 It must be noted that the grounds put forward by Hochmann Marketing in its application for revision of the contested order stem from a manifestly incorrect reading of Article 159(1) of the Rules of Procedure.

43 The Court has ruled that that provision, as interpreted by the case-law referred to in paragraph 38 above, makes the admissibility of an application for revision of a judgment or order of the Court subject to discovery of a fact which, before the judgment was delivered or the order served, was unknown to the Court. It follows that the fact on which such an application for revision is based must predate the delivery of the judgment or service of the order of the Court which is the subject of the application for revision (see, to that effect, order of 16 January 2020, Hochmann Marketing v EUIPO, C‑118/18 P‑REV II, not published, EU:C:2020:11, paragraph 31).

44 The facts relied on by Hochmann Marketing in support of its application for revision, referred to in paragraph 41 above, all postdate the date on which the contested order was served, namely 29 June 2018.

45 Moreover, it is also important to note that, by its third application for revision, as in its two previous applications, Hochmann Marketing seeks, principally, the annulment of the contested order.

46 However, in accordance with the case-law referred to in paragraph 38 above, such a head of claim cannot succeed (order of 16 January 2020, Hochmann Marketing v EUIPO, C‑118/18 P‑REV II, not published, EU:C:2020:11, paragraph 34).

47 In those circumstances, in accordance with Article 159(5) of the Rules of Procedure, the present application for revision must be dismissed as inadmissible.

Costs

48 Under Article 138(1) 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. Since EUIPO and Rainberry have requested that Hochmann Marketing be ordered to pay the costs and the latter has been unsuccessful, it must be ordered to pay the costs.

On those grounds, the Court (Eighth Chamber) hereby orders:

1. The application for revision brought by Hochmann Marketing GmbH is dismissed.

2. Hochmann Marketing GmbH shall pay the costs.

Luxembourg, 4 June 2020.





A. Calot Escobar L.S. Rossi