ORDER OF THE COURT (Eighth Chamber)

8 May 2019 ( )

(Application for revision — Article 159 of the Rules of Procedure of the Court — Conditions — Appeal — Failure to raise a new fact — Inadmissibility)

In Case C‑118/18 P-REV,

APPLICATION seeking the revision of the order of 28 June 2018, Hochmann Marketing v EUIPO (C‑118/18 P, not published, EU:C:2018:522), brought on 27 September 2018,

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 A. Folliard-Monguiral, acting as Agent,

defendant at first instance,

Rainberry Inc., formerly BitTorrent Inc., established in San Francisco (United States), represented by S. Clotten, Rechtsanwalt,

intervener at first instance,

THE COURT (Eighth Chamber),

composed of F. Biltgen, President of the Chamber, C.G. Fernlund and L.S. Rossi (Rapporteur), Judges,

Advocate General: G. Hogan,

Registrar: A. Calot Escobar,

having regard to the written procedure,

after hearing the Advocate General, G. Hogan,

makes the following

Order

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

2 By that order, the Court, in accordance with Article 181 of its Rules of Procedure, dismissed 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), as being in part manifestly inadmissible and in part manifestly unfounded.

Background to the application for revision

3 On 6 June 2003, the applicant for revision, Hochmann Marketing, filed a request for registration of the word mark ‘bittorrent’ as an EU trade mark with the European Union Intellectual Property Office (EUIPO). On 5 August 2003, that company also applied for registration as a national trade mark of the same word mark ‘bittorrent’ with the Deutsches Patent- und Markenamt (German Patent and Trade Marks Office).

4 On 8 June 2006, that sign was registered as an EU trade mark.

5 On 24 June 2011, the intervener at first instance, Rainberry Inc., formerly BitTorrent Inc., filed an application for revocation of that mark with EUIPO, on the ground that that mark had not been put to genuine use in the European Union in connection with the services concerned within a continuous period of five years. Rainberry also filed an application for revocation of the corresponding German trade mark with the Landgericht Berlin (Regional Court, Berlin, Germany).

6 On 21 November 2011, that is on the last day of the time limit set by EUIPO for that purpose, Hochmann Marketing responded to the request to submit evidence of genuine use of that mark in the European Union by transmitting a letter by fax which contained a ‘list of evidence’ and referred to ‘items of evidence’ in attached documents. However, those documents were not attached to the letter and were received by post three days after the expiry of the abovementioned time limit.

7 By decision of 24 September 2013, the Cancellation Division of EUIPO upheld the application for revocation of the EU mark.

8 On 19 November 2013, Hochmann Marketing brought an appeal before EUIPO against the decision of the Cancellation Division. The Fifth Board of Appeal of EUIPO, after finding that it had failed to produce any relevant evidence before the Cancellation Division within the given time limit, dismissed that appeal on the ground that genuine use had not been established. However, for the sake of completeness, the Board of Appeal assessed the evidence which was produced out of time, including the evidence produced before it, and held that that evidence did not establish that the mark at issue had been put to use.

9 By decision of 31 August 2015, the Board of Appeal held that the revocation of the EU mark would be pronounced with effect from 24 June 2011.

10 However, the application for revocation of the German mark bittorrent, filed in parallel by Rainberry before the national court was dismissed. The judgment upholding that application, given by the Landgericht Berlin (Regional Court Berlin) was subject to revision by the judgment of the Kammergericht Berlin (Higher Regional Court, Berlin) of 15 April 2015 which held that as far as concerns four services covered by the German mark bittorrent the latter had been put to use justifying the maintenance of the rights in respect of that mark. The judgment of the Kammergericht Berlin (Higher Regional Court, Berlin) was confirmed by the judgment of the Bundesgerichtshof (Federal Court of Justice, Germany) of 29 June 2017, and therefore became final.

11 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 judgment of 12 December 2017, Hochmann Marketing v EUIPO — BitTorrent (bittorrent) (T‑771/15, not published, EU:T:2017:887).

12 Hochmann Marketing then brought an appeal seeking to have that judgment set aside, in support of which it raised four grounds of appeal, based on the infringement of Article 51(1)(a) and Article 76 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) and based on the failure to consider the evidence.

13 For the reasons set out in paragraphs 8, 9, 11, 12, 17, 18, 21, 22 and 25 of the View of Advocate General Kokott, cited in paragraph 5 of the order under appeal, and for the reason set out in paragraph 6 of that order, the Court dismissed the appeal in its entirety, by reasoned order, as being, in part manifestly inadmissible and in part manifestly unfounded.

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

14 Hoffman Marketing claims that the Court should

– open the procedure for revision of the 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 31 August 2015 of the Fifth Board of Appeal in Case R 2275/2013-5 and dismiss the application for revocation brought by the intervener at first instance, or, in the alternative, set aside the judgment and refer the case back to the General Court;

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

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

15 EUIPO contends that the Court should:

– dismiss the application for revision as inadmissible and

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

16 Rainberry contends that the Court should:

– dismiss the application for revision, and

– order Hochmann Marketing to pay the costs

The application for revision

Arguments of the parties

17 Hochmann Marketing raises two pleas in law in support of its application for revision. Those two pleas are based in the infringement of Article 181 of the Rules of Procedure, read together with Article 130(1) and Article 21(4) thereof and the infringement of Article 181 of that regulation, read together with Article 59, second sentence, of the Statute of the Court of Justice of the European Union.

18 By those pleas, Hochmann Marketing essentially criticises the Court for incorrectly applying Article 181 of the Rules of Procedure, by not permitting the applicant itself and the parties concerned to intervene before the adoption of the order under appeal, or even allowing them to be heard before ruling without an oral procedure, and thereby to have violated the right to an effective remedy referred to in Article 47 of the Charter of Fundamental Rights.

19 More specifically, in its first plea, Hochmann Marketing claims that the Court delivered the order under appeal before publishing in the Official Journal of the European Union the notice indicating the date of registration of the appeal brought by the applicant, in accordance with Article 21(4) of the Rules of Procedure, so that the interested parties did not have the opportunity to lodge an application for leave to intervene. According to Hochmann Marketing, since Article 130(1) of the Rules of Procedure provides that applications for leave to intervene must be submitted within six weeks of publication in the Official Journal of the European Union of the notice referred to in Article 21(4), the Court should have given a ruling after the expiry of that time limit, in order to enable the submission of applications for leave to intervene. It is only at that stage, if all the conditions were fulfilled, that Article 181 of the Rules of Procedure could have been applied. The order under appeal is therefore vitiated by a serious procedural error which undermined the right of the applicant, potential interveners, governments and the European Commission to be heard.

20 Furthermore, Hochmann Marketing considers that the observations of potential interveners could have led the Court to make a different assessment of the facts in relation to the pleas relied on and to decide not to hold the appeal as being manifestly inadmissible and manifestly unfounded. Moreover, Hochmann Marketing states that it could have presented new evidence in its observations which would have supported the interpretation of the Court in the judgment of 19 December 2012, Leno Merken (C‑149/11, EU:C:2012:816), according to which genuine use in the territory of one Member State, namely Germany, is sufficient to justify preserving the rights over that mark. That new evidence included, inter alia, judgments of the Bundespatentgericht (Federal Patents Court, Germany) and EUIPO on one hand and, on the other hand, the judgment of the Kammergericht Berlin (Higher Regional Court, Berlin) of 15 April 2015, impliedly confirmed by the judgment of the Bundesgerichtshof (Federal Court of Justice) of 29 June 2017. Hochmann Marketing became aware of the first decisions after lodging the appeal before the Court while the second were known to the Court but were not taken into consideration in the reasoning of the order under appeal.

21 In support of the second plea, Hochmann Marketing claims there is a ‘discrepancy’ between Article 181 of the Rules of Procedure and Article 59 of the Statute of the Court of Justice of the European Union. That discrepancy relates to the fact that the first provision allows an appeal to be dismissed as manifestly inadmissible or manifestly unfounded by reasoned order, after hearing the Advocate General, while the second provision must be interpreted as meaning that it also requires the parties to be heard before deciding to apply Article 181 of the Rules of Procedure. Neither the Court nor the applicant itself was aware of that discrepancy.

22 EUIPO and Rainberry take the view that the application for revision must be dismissed as inadmissible.

Findings of the Court

23 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, the 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

24 Furthermore, under Article 159(5) of the Rules of Procedure, without prejudice to its decision on the substance, the Court, after hearing the Advocate General, must give in the form of an order its decision on the admissibility of the application, having regard to the written observations of the parties.

25 According to consistent case-law of the Court of Justice, 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. 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 (order of 11 December 2018, GX v Commission, C‑233/17 P-REV, not published, EU:C:2018:1001, paragraph 19 and the case-law cited).

26 It follows 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).

27 In the present case, it must be held that the national and European case-law to which Hochmann Marketing refers does not constitute new unknown facts, within the meaning of Article 44 of the Statute of the Court of Justice of the European Union, any more than the procedural infringements alleged by the latter, even assuming that they could have a decisive impact on the outcome of the dispute.

28 First of all, as far as concerns the provisions of the Statute and the Rules of Procedure and the judgment of the Court of 19 December 2012, Leno Merken (C‑149/11, EU:C:2012:816), not only do they not constitute new facts, but they must be considered to be well known by the Court (see, to that effect, 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 20).

29 Next, even if the national case-law concerning the genuine use of the German mark, which was allegedly unknown to the Court and the applicant for revision, may be considered as a ‘fact’ within the meaning of Article 44 of the Statute of the Court of Justice of the European Union, it suffices to observe that such case-law would not have led the Court to adopt a different outcome to the dispute. As set out in paragraph 21 of the order under appeal, the EU trade mark regime is an autonomous system, with its own set of objectives and rules peculiar to it, and it applies independently of any national system, which means that the EU Courts are not bound by decisions adopted in any Member State, those decisions constituting merely an element which, without being decisive, can only be taken into consideration for the purposes of the registration of an EU trade mark.

30 Finally, since, by its application for revision, Hochmann Marketing seeks to have the contested order set aside on account of a ‘serious procedural error of crucial importance’, it must be recalled that, according to settled case-law, revision is not an appeal procedure, which can, in the absence of any new fact, call into question the legal assessments made by the Court, which have the authority of res judicata (order of 11 December 2018, GX v Commission, C‑233/17 P-REV, not published, EU:C:2018:1001, paragraph 22).

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

Costs

32 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 asked that Hochmann Marketing be ordered to pay the costs and the latter has been unsuccessful, Hochmann Marketing 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 is to pay the costs.

Luxembourg, 8 May 2019.





A. Calot Escobar F. Biltgen