ORDER OF THE COURT (Eighth Chamber)

16 January 2020 ( )

(Application for revision — Article 159 of the Rules of Procedure of the Court of Justice — Request relating to an order made pursuant to Article 181 of the Rules of Procedure — Conditions — Appeal — Absence of previously unknown facts — Inadmissibility)

In Case C–118/18 P-REV II,

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 18 June 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 F. Biltgen, 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, filed an application under Article 44 of the Statute of the Court of Justice of the European Union 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).

2 By that order, the Court, in accordance with Article 181 of the 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.

Legal context

3 Chapter XI 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), on the effect of European Union trade marks on the laws of the Member States, contains a Section 3, entitled ‘Conversion into a national trade mark application’, which comprises Articles 139 to 141 of that regulation. Article 139 of that regulation states:

‘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;

…’

4 Article 140 of that regulation provides:

‘…

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.

…’

Background to the application for revision

5 On 6 June 2003, 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).

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

7 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 within a continuous period of 5 years. At the same time, Rainberry filed an application for revocation of the corresponding German trade mark with the Landgericht Berlin (Regional Court, Berlin, Germany).

8 On 21 November 2011, that is to say 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 3 days after the expiry of the abovementioned time limit.

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

10 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 the applicant for revision 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.

11 By decision of 31 August 2015, the Board of Appeal held that the evidence did not establish that the mark at issue had been put to use and that, consequently, the EU mark must be revoked with effect from 24 June 2011.

12 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, delivered by the Landgericht Berlin (Regional Court, Berlin) was subject to revision by the judgment of the Kammergericht Berlin (Higher Regional Court, Berlin, Germany) of 15 April 2015, which held that, as far as four services covered by the German mark bittorrent are concerned, the latter had been put to a 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.

13 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).

14 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 [EU] trade mark (OJ 2009 L 78, p. 1) and based on the failure to consider the evidence.

15 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 as being in part manifestly inadmissible and in part manifestly unfounded.

16 On 27 September 2018, Hochmann Marketing filed its first application for revision of the order under appeal. 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 by application of Article 159(5) of the Rules of Procedure.

17 On 18 June 2019, Hochmann Marketing filed the present application for a revision of the order under appeal.

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

18 Hoffman Marketing claims that the Court should:

– open the procedure for revision of the order under appeal;

– primarily, 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;

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

19 EUIPO contends that the Court should:

– dismiss the application for revision as inadmissible; and

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

20 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

21 Hochmann Marketing bases its application for revision on an EUIPO decision of 12 March 2019, which approved the conversion of the EU trade mark bittorrent into two national trade mark applications, German and Austrian respectively.

22 According to the applicant for revision, that decision would constitute evidence that the grounds set out in the order under appeal, for the purpose of rejecting as manifestly unfounded the plea alleging failure by the General Court to take account of a judgment of the Kammergericht Berlin (Higher Regional Court, Berlin) finding genuine use of a German mark identical to the EU trade mark at issue, were incorrect. In particular, the grounds for that EUIPO decision conflict with the grounds of the order under appeal, according to which, since the European Union’s trade mark regime is an autonomous regime in relation to national systems, neither EUIPO nor, as the case may be, the EU Courts, are bound by decisions adopted in Member States.

23 In that regard, the applicant for revision points out that a decision authorising the conversion of an EU trade mark into national trade marks, in accordance with Articles 139 and 140 of Regulation 2017/1001, is based on the genuine use of that mark within the meaning of the legislation of one or more Member States for which conversion has been requested. In addition, the applicant for revision argues that EUIPO approved its request for conversion of the EU trade mark bittorrent not only for Germany but also for Austria, on the basis of the abovementioned judgment of the Kammergericht Berlin (Higher Regional Court, Berlin), the effects of which are not therefore limited to German territory, but cover the entire German-speaking market.

24 In other words, according to the applicant for revision, the approval of such a request for conversion by EUIPO presupposes the latter’s recognition of the relevance of the case-law of one of the Member States in order to demonstrate genuine use of the EU trade mark throughout the territory of the European Union. It follows, by analogy, that, in the context of an application for revocation, genuine use of a trade mark in the territory of a single Member State is sufficient to justify the maintenance of the rights in respect of that trade mark.

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

Findings of the Court

26 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.

27 Furthermore, under Article 159(5) of the Rules of Procedure, in the event of the filing of an application for revision, 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.

28 In accordance with the settled case-law of the Court, 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 (orders of 11 December 2018, GX v Commission, C–233/17 P‑REV, not published, EU:C:2018:1001, paragraph 19, and of 8 May 2019, Hochmann Marketing v EUIPO, C‑118/18 P-REV, not published, EU:C:2019:396, paragraph 25).

29 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 8 May 2019, Hochmann Marketing v EUIPO, C‑118/18 P-REV, not published, EU:C:2019:396, paragraph 26).

30 In the present case, the applicant for revision submits that the EUIPO decision of 12 March 2019 constitutes the fact which would be likely to have a decisive influence on the order under appeal and which was unknown to the Court and to the party claiming the revision of that order, within the meaning of Article 159(1) of the Rules of Procedure.

31 That provision, as interpreted by the case-law referred to in paragraph 28 of the present order, makes the admissibility of an application for revision of a decision of the Court subject to the discovery of a fact which, before the decision was given, was unknown to the Court. It follows that the fact on the basis of which such a request for revision is based must precede the delivery of the decision of the Court which is the subject of the application for revision.

32 As regards the EUIPO decision of 12 March 2019, it must be noted that that decision postdates the delivery of the order under appeal, for the purpose of Article 159(1) of the Rules of Procedure.

33 It is also important to note that by its second application for revision, as by its first application for revision, Hochmann Marketing seeks the annulment of the order under appeal.

34 In accordance with the case-law cited in paragraph 28 of the present order, such a head of claim cannot succeed (see, to that effect, order of 8 May 2019, Hochmann Marketing v EUIPO, C‑118/18 P-REV, not published, EU:C:2019:396, paragraph 30).

35 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

36 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 is to pay the costs.





Luxembourg, 16 January 2020.





A. Calot Escobar L.S. Rossi