ORDER OF THE COURT (Ninth Chamber)

28 June 2018 ( )

[Text rectified by order of 13 December 2018]

(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Revocation proceedings — Word mark bittorrent — Declaration of revocation)

In Case C‑118/18 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 12 February 2018,

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

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

BitTorrent Inc., established in San Francisco (United States),

intervener at first instance,

THE COURT (Ninth Chamber),

composed of C. Vajda (Rapporteur), President of the Chamber, E. Juhász and C. Lycourgos, Judges,

Advocate General: J. Kokott,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, pursuant to Article 181 of the Rules of Procedure of the Court of Justice,

makes the following

Order

1 By its appeal, Hochmann Marketing GmbH, formerly Bittorrent Marketing GmbH, seeks to have set aside 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, ‘the judgment under appeal’, EU:T:2017:887), by which the General Court dismissed its action seeking the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 August 2015 (Case R 2275/2013–5) concerning revocation proceedings between BitTorrent Inc. and Bittorrent Marketing.

2 In support of its appeal, the appellant raises four grounds of appeal, the first, second and third alleging infringement of 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 the fourth alleging infringement of Article 51(1)(a) of that regulation.

The appeal

3 Under Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

4 That provision must be applied in the present case.

5 On 14 May 2018, the Advocate General took the following position:

‘1. In the main proceedings, the dispute between the parties concerns whether EUIPO was correct to revoke the word mark bittorrent, registered on 8 June 2006 in favour of the company which was Hochmann Marketing’s predecessor in title, on the ground that that word mark had not been put to genuine use.

2. The central question of the case is rooted in the fact that on the last day of the time limit for establishing genuine use of the mark at issue, namely 21 November 2011, the appellant responded to the request to submit evidence of use of that mark by transmitting a five-page letter by fax. The letter referred to attached documents which, however, were not attached to the fax. By fax of 23 November 2011, the appellant’s representative informed EUIPO that, on that day, at about 23:07, he had sent a 5-page letter by fax containing a “list of evidence” together with 69 pages of “items of evidence”. Moreover, he stated that, after receiving 3 fax reports indicating that a problem had occurred, he had finally used a smaller fax machine, which was not suitable for handling large faxes, to send just the 5-page letter. Three days later EUIPO received by post the 69 pages of items of evidence referred to in the 5-page letter.

3. Two years later, the Cancellation Division upheld the application for revocation and, subsequently, the Fifth Board of Appeal of EUIPO held that the appellant had submitted no relevant proof before the Cancellation Division within the time limit specified. The General Court confirmed the decision of the Board of Appeal.

4. The appellant raises four grounds of appeal, alleging infringement of Article 76 (first, second and third grounds of appeal) and of Article 51(1)(a) of Regulation No 207/2009 (fourth ground of appeal) in that, according to the appellant, various items of evidence were not taken into account.

First ground of appeal, concerning the rejection of the evidence submitted by the appellant before the Cancellation Division

5. By its first ground of appeal, the appellant submits that the General Court, by finding, in essence, in paragraph 52 of the judgment under appeal, that the Board of Appeal of EUIPO was able to refuse to take into account the evidence provided after the passing of the time limit set by the Cancellation Division of EUIPO, infringed Article 76 of Regulation No 207/2009 and, therefore, its discretion under that article.

6. First of all, the appellant challenges the fact that the General Court did not mention certain facts discussed during the hearing that took place before it and which, according to the appellant, were of importance as regards EUIPO’s exercise of its discretion.

7. It submits that the General Court in particular did not mention that the appellant’s agent had requested EUIPO, two days after the transmission of the five-page letter, to indicate to him whether the facsimiles had reached it in whole or in part. EUIPO never replied to that request. The appellant submits that that omission and its consequences should have been taken into account by EUIPO when exercising its discretion.

8. If that argument corresponds to the facts, the General Court should have examined it. However, it is not apparent from the minutes of the hearing that those facts were indeed discussed and it is not necessary to deal with that question any further. Those circumstances have no bearing on the fact that the appellant, from the time at which it lodged its application initiating proceedings, submitted before the General Court neither this part of the first ground of appeal nor the corresponding evidence, and nor has it justified that omission. That submission was therefore late under Articles 84 and 85 of the Rules of Procedure of the General Court.

9. In the context of the appeal proceedings, this is therefore a new plea in law which is consequently inadmissible.

10. Furthermore, the appellant challenges the fact that the General Court held in paragraph 51 of the judgment under appeal that, in the light of all the circumstances and, especially, the four months and two days it had to adduce proof of genuine use of its mark, the appellant could have taken reasonable steps to guard against the risk of failing to comply with the time limit specified by EUIPO that may have been caused by the transmission of a large amount of supporting documents.

11. However, that assessment is not vitiated by any error because there is no obvious reason — notwithstanding the temporary unavailability of the appellant’s agent due to illness — why a prudent proprietor of a trade mark would have been forced to expose himself to the risk of a late transmission.

12. Furthermore, the General Court rightly states that the appellant could have filed a request for restitutio in integrum under Article 81 of Regulation No 207/2009 or could have requested the continuation of proceedings in accordance with Article 82 of that regulation. A message from EUIPO indicating to the appellant that the evidence which it had submitted had reached EUIPO within the time limit was not necessary for the purpose of taking those steps.

13. This ground of appeal is therefore, in part, manifestly inadmissible and, in part, manifestly unfounded.

Second ground of appeal, concerning the evidence submitted by the intervener at first instance

14. The second ground relied on in support of the appeal concerns evidence submitted by the intervener at first instance. EUIPO did not take that evidence into account, a fact which the General Court confirmed in paragraphs 53 to 55 of the judgment under appeal.

15. The appellant submits, in particular, that the General Court erred in holding, in paragraph 55 of the judgment under appeal, that it is for the proprietor of the mark alone to prove that it has been put to genuine use.

16. That paragraph is worded as follows:

“In that regard ... in revocation proceedings, it is for the proprietor of the contested mark to establish genuine use of that mark. The applicant, therefore, cannot rely in the present case on the items submitted by the intervener [at first instance], which are no more than an extract from the website ‘bittorrent.net’ and a report that simply describes that website, as a relevant circumstance in its favour or as items that are sufficient to demonstrate genuine use of the mark at issue.”

17. The General Court does not therefore base itself solely on its finding relating to the burden of proof, but is also stating that the evidence in question is not sufficient to prove genuine use of the mark. That second finding includes an assessment of the facts, which is a sufficient basis for the judgment under appeal in that regard and which cannot be reviewed by the Court of Justice in appeal proceedings.

18. Consequently, it is not necessary to rule on the question of whether the General Court could properly hold that it was for the proprietor of the contested mark alone to adduce evidence that the mark had been put to genuine use in order to refuse to take into account the evidence produced by the intervener at first instance.

19. The second ground of appeal is therefore manifestly ineffective.

[As rectified by order of 13 December 2018] Third ground of appeal, concerning the failure to take into account a judgment of the Kammergericht Berlin (Higher Regional Court, Berlin, Germany)

20. By its third ground of appeal, the appellant submits that the General Court, by finding in paragraph 56 of the judgment under appeal that EUIPO was not obliged to take into account a judgment of the Landgericht Berlin (Regional Court, Berlin, Germany), by which that court held that the appellant had put the German trade mark bittorrent to genuine use, infringed Article 76 of Regulation No 207/2009.

21. On that point, suffice it to recall, as the General Court has already done so in that regard in the judgment under appeal, that the EU trade mark regime is an autonomous system, with its own set of objectives and rules peculiar to it, and that it applies independently of any national system. Consequently, neither EUIPO nor, as the case may be, the EU Courts are bound by decisions adopted in any Member State, or indeed a third country; those decisions constitute merely an element which, without being decisive, can only be taken into consideration for the purposes of the registration of an EU trade mark (judgments of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 65, and of 16 July 2009, American Clothing Associates v OHIM and OHIM v American Clothing Associates, C‑202/08 P and C‑208/08 P, EU:C:2009:477, paragraph 58).

22. [As rectified by order of 13 December 2018] In the assessment of the genuine use of an EU trade mark, the decision of a national court concerning the genuine use of a national trade mark can neither bind EUIPO nor replace EUIPO’s assessment of the evidence, and that is the case even if that national trade mark is identical to the EU trade mark. The judgment of the Kammergericht Berlin (Higher Regional Court, Berlin) does not therefore constitute a new item of evidence of genuine use of the EU trade mark that EUIPO was obliged to take into account.

23. The third ground of appeal is therefore also manifestly unfounded.

Fourth ground of appeal, alleging infringement of Article 51(1)(a) of Regulation No 207/2009

24. By its fourth ground of appeal, the appellant submits that, in paragraphs 67 to 69 of the judgment under appeal, the General Court, by rejecting as ineffective the appellant’s arguments against the assessment of the evidence by the Board of Appeal of EUIPO, also infringed Article 51(1)(a) of Regulation No 207/2009.

25. [As rectified by order of 13 December 2018] However, the appellant does not explain to what extent the findings of the General Court are vitiated by an error of law but, as in its action before the General Court, the appellant challenges only the Board of Appeal’s assessment of the evidence. Given that, in an appeal, the jurisdiction of the Court of Justice is confined to a review of the findings of law on the pleas argued at first instance, this ground of appeal is manifestly inadmissible.

Conclusion

26. It follows from the foregoing considerations that the present appeal must be dismissed in its entirety as being, in part, manifestly inadmissible and, in part, manifestly unfounded.’

6 It must be added, with regard to the first ground of appeal, that the allegation of an infringement of Article 47 of the Charter of Fundamental Rights of the European Union, in that (i) EUIPO did not respond to the request of the appellant’s agent for confirmation as to whether that office had received the faxes in question and (ii) the Board of Appeal did not take into account the evidence submitted by the appellant in the proceedings before EUIPO, was not raised in the application lodged before the General Court. That part of the first ground of appeal is therefore manifestly inadmissible.

7 For that latter reason and on the same grounds as those found by the Advocate General, the appeal must be dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

Costs

8 Under Article 137 of the Rules of Procedure of the Court of Justice, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. Since the present order has been adopted before the appeal was served on the other parties to the proceedings and, consequently, before those other parties could have incurred costs, it is appropriate to decide that Hochmann Marketing must bear its own costs.

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

1. The appeal is dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

2. Hochmann Marketing GmbH shall bear its own costs.





Luxembourg, 28 June 2018.





A. Calot Escobar C. Vajda