JUDGMENT OF THE GENERAL COURT (Third Chamber)
12 December 2017 (*)
(EU trade mark — Revocation proceedings — EU word mark bittorrent — Article 76(1) and (2) of Regulation (EC) No 207/2009 (now Article 95(1) and (2) of Regulation (EU) 2017/1001) — No account taken of evidence submitted before the Cancellation Division — Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001))
In Case T‑771/15,
Hochmann Marketing GmbH, formerly Bittorrent Marketing GmbH, established in Neu-Isenburg (Germany), represented by C. Hoppe, M. Terhaag and C. Schwarz, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and M. Capostagno, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
BitTorrent, Inc., established in San Francisco, California (United States), represented by M. Kinkeldey, S. Clotten, S. Brandstätter and C. Schmitt, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 31 August 2015 (Case R 2275/2013–5) concerning revocation proceedings between BitTorrent and Bittorrent Marketing,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: I. Dragan,
having regard to the application lodged at the Court Registry on 30 December 2015,
having regard to the response of the intervener lodged at the Court Registry on 17 October 2016,
having regard to the response of EUIPO lodged at the Court Registry on 19 October 2016,
further to the hearing on 19 September 2017,
gives the following
Judgment
Background to the dispute
1 On 6 June 2003, the applicant, Hochmann Marketing GmbH, formerly Bittorrent Marketing GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2 Registration as a mark was sought for the word sign bittorrent.
3 The services in respect of which registration was sought are in, inter alia, Classes 35, 38 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:
– Class 35: ‘Marketing, sales promotion, advertising, including radio and television advertising, cinema advertising, advertising documentation; arranging contracts for the buying and selling of goods and domains, and in connection with the providing of services, including on the internet; business management of retail stores and/or mail order outlets, for others, in particular within the framework of an internet shop, including via online services, including the internet; recording, capture, storage and processing of messages, images, text, speech, signals and data, in particular in digital form’;
– Class 38: ‘Compilation, bringing together and transmission of messages and information, in particular in publicly accessible databases and in data networks, including the internet; media and press agency services; electronic bulletin board services [telecommunications services]’;
– Class 42: ‘Programming; database provider services, namely creation, installation, configuration, maintenance, repair, care and design of databases; providing computer programs on data networks; design of software; film, television and video licensing; licensing of software; providing of memory space on the internet’.
4 The EU trade mark application was published in Community Trade Marks Bulletin No 027/2004 of 5 July 2004 and was registered on 8 June 2006.
5 On 24 June 2011, the intervener, BitTorrent Inc., filed an application for revocation of the mark at issue, based on Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), 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.
6 On 19 July 2011, EUIPO notified the applicant that it had three months within which to submit evidence of use of the mark at issue.
7 On 17 October 2011, following a request from the applicant, EUIPO extended the time limit for submitting evidence of use of the mark at issue, which had been due to expire on 19 October 2011, by one month, to 21 November 2011 (since 19 November 2011 fell on a Saturday).
8 On 21 November 2011, the last day of the time limit for establishing genuine use of the mark at issue, the applicant 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.
9 By fax of 23 November 2011, the applicant’s representative informed EUIPO that, on 21 November 2011, 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, the applicant’s representative stated that, after receiving 3 fax reports indicating that a problem had occurred, it had finally used a smaller fax machine, which was not suitable for handling large faxes, to send just the 5-page letter. The fax report from the smaller fax machine indicated ‘OK’ at 23.54.
10 On 24 November 2011, EUIPO received by post the 69 pages of items of evidence referred to in the 5-page letter sent by fax on 21 November 2011.
11 By decision of 24 September 2013, the Cancellation Division upheld the application for revocation. The rights of the proprietor of the mark at issue were revoked in respect of the services referred to in paragraph 3 above as of 24 June 2011.
12 On 19 November 2013, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.
13 By decision of 31 August 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO held that the applicant had submitted no relevant proof before the Cancellation Division within the time limit specified. The Board of Appeal found that, in the circumstances, the evidence submitted before the Board could not be taken into account. It therefore concluded that genuine use of the mark at issue had not been proven, and held that the mark must be revoked with effect from 24 June 2011. For the sake of completeness, the Board of Appeal nonetheless assessed the evidence submitted late before the Cancellation Division and that submitted before the Board at the appeal stage, and held that it did not prove use of the mark at issue.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
15 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of annexes submitted for the first time before the General Court
16 According to the applicant, the Court should exceptionally take into consideration Annex A.12 — a judgment of the Kammergericht Berlin (Higher Regional Court, Berlin, Germany) of 15 April 2015 in proceedings between the intervener and the applicant concerning the German mark bittorrent — and Annex A.14 — a sworn statement by its managing director — in order to remedy, after the event, the infringement of the applicant’s right to be heard given that the Board of Appeal rejected its request for oral proceedings. In addition, by letter of 8 March 2017, the applicant informed the Court that the judgment of the Kammergericht Berlin (Higher Regional Court, Berlin) had become final, and submitted, as Annex A.26, a document dated 1 March 2017 confirming that the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) had limited the list of services covered by the registration of the German mark bittorrent to those in respect of which that German mark had been used. By letter of 1 September 2017, the applicant then sent to the Court, as Annex A.31 to the application, the decision of the Bundesgerichtshof (Federal Court of Justice, Germany) of 29 June 2017 concerning that judgment of the Kammergericht Berlin (Higher Regional Court, Berlin). Translations of the decisions of the Kammergericht Berlin (Higher Regional Court, Berlin) (Annex A.26) and of the Bundesgerichtshof (Federal Court of Justice) (Annex A.31) were also sent as Annexes A.32 and A.33 to the application.
17 EUIPO disputes the admissibility of Annexes A.12 and A.14 on the ground that they were submitted for the first time before the Court. With regard to Annex A.26, EUIPO considers any fact that follows from the judgment of the Kammergericht Berlin (Higher Regional Court, Berlin), and any documentary evidence supporting such fact, to be inadmissible. Upon a request, at the hearing, to submit observations on the annexes sent by letter of 1 September 2017, EUIPO disputed the admissibility of those annexes on the same grounds as those previously mentioned.
18 The intervener argues that Annex A.12 and Annex A. 26 are devoid of any relevance given that, inter alia, the judgment of the Kammergericht Berlin (Higher Regional Court, Berlin) only affects Germany. It is of the opinion, moreover, that Annex A.14 was lodged late and has no probative value. The intervener, having also been invited to submit observations on the annexes sent by letter of 1 September 2017 at the hearing, argued that Annex A.31 was irrelevant and, in addition, must be declared inadmissible because, inter alia, pursuant to Article 188 of the Rules of Procedure of the General Court, the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings before the Board of Appeal.
19 With regard to Annex A.14, that is to say, the sworn statement by the applicant’s managing director, it must be recalled that the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so that it is not the General Court’s function to review the facts in the light of evidence produced for the first time before it. Accordingly, the annex in question must be excluded, without it being necessary to assess its probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited). Moreover, contrary to the applicant’s assertions, the fact that the Board of Appeal rejected its request for oral proceedings does not alter that conclusion. The fact that a request for oral proceedings was made by the applicant and rejected by the Board of Appeal cannot influence, in the present case, the Court’s decision, when reviewing the lawfulness of the Board of Appeal’s decision, as to whether or not to take into consideration a sworn statement by the applicant’s managing director submitted for the first time before it.
20 With regard to Annexes A.12, A.26 and A.31, which concern the judgment of the Kammergericht Berlin (Higher Regional Court, Berlin), it must be pointed out that neither the parties nor the Court itself can be precluded from drawing on national case-law for the purposes of interpreting EU law. That possibility of referring to national decisions is not covered by the case-law according to which the purpose of actions brought before the General Court is to review the legality of decisions of the Boards of Appeal in the light of the evidence submitted by the parties before the Boards of Appeal, since it is not a question of criticising the Boards of Appeal for not taking the factual aspects of a specific national decision into account, but rather of citing decisions in support of a plea alleging that the Boards of Appeal infringed a provision of Regulation No 207/2009 (see, to that effect, judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 70 and 71). It should be observed, furthermore, that certain documents relating to the proceedings that resulted in that judgment of the Kammergericht Berlin (Higher Regional Court, Berlin) were produced before EUIPO at the appeal stage and that, on 6 May 2015, the applicant communicated to EUIPO the operative part of that judgment, indicating that it would receive it in full at a later date. The applicant finally received the full judgment in September 2015.
21 In the present case, to the extent that the applicant, in particular in paragraphs 55 and 61 to 63 of the application, relies on that judgment, which was delivered by a national court in a case concerning a national mark, to reason by analogy in the present case, that judgment may not regarded as evidence in the narrow sense (see, to that effect, judgments of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 20, and of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 16). Accordingly, in accordance with the case-law referred to in paragraph 20 above and in this paragraph, Annex A.12 as well as Annexes A.26 and A.31 and their translations (Annexes A.32 and A.33) are admissible.
Substance
22 In support of its action, the applicant relies on two pleas in law, alleging, respectively, infringement of Article 76(1), first limb, and Article 76(2) of Regulation No 207/2009 (now Article 95(1), first limb, and Article 95(2) of Regulation 2017/1001), and infringement of Article 51(1)(a) of that regulation.
First plea in law, alleging infringement of Article 76(1), first limb, and Article 76(2) of Regulation No 207/2009
23 The applicant submits, in essence, that the Board of Appeal prioritised the intervener’s interest in a swift procedure by failing to comply with the principles regarding its own interests. According to the applicant, the Board of Appeal should have, first, considered that the taking into account of all the known evidence satisfied the Board of Appeal’s and the Cancellation Division’s duty to examine the facts on its own motion; secondly, account should have been taken of the fact that the late submission of the evidence in question was due to a failure of the fax machine belonging to the applicant’s representative; and, thirdly, account should have been taken of the fact that the delay only amounted to three days, which, in the circumstances, was very minor. In addition, the applicant submits that the Board of Appeal was wrong to hold that there was an inherent risk in sending a significant amount of documents by fax.
24 Next, the applicant claims that the intervener had presented an extract from its website dated 22 June 2011 with its application for revocation, that it had carried out a search concerning the ‘bittorrent.net’ website on 18 October 2011 and that it had never disputed that some of the evidence submitted late was accessible online at the material time. That same evidence was also presented, according to the applicant, before the Landgericht Berlin (Regional Court, Berlin, Germany) in 2010, which delivered a judgment in its favour on 15 March 2011. The applicant adds that EUIPO already had in its possession proof of use since May 2008 in the form of a description of that website, together with extracts from its homepage, supplied in Opposition Procedure No 000 960 239 concerning the intervener’s mark BITTORRENT.
25 In addition, the applicant complains that the Board of Appeal merely stated that a time limit had been imposed when it should have reflected on whether the taking into consideration of the evidence produced late would result in the proceedings being protracted or adversely affected. According to the applicant, the decision to disregard the evidence in question, in the present case, is solely punitive in nature.
26 Lastly, the applicant submits that, since the evidence produced before the Cancellation Division, although late, should have been taken into account, the evidence submitted in the appeal procedure was supplementary ‘additional’ evidence which, in accordance with the case-law, was to be taken into consideration if, as in the present case, it was relevant.
27 EUIPO and the intervener dispute the applicant’s arguments.
28 In the first place, it is appropriate to dismiss from the outset the applicant’s arguments based on Article 76(1), first limb, of Regulation No 207/2009 concerning EUIPO’s examination of the facts of its own motion in revocation proceedings. In that regard, suffice it to recall that the Court of Justice has already held that it may be inferred from a combined reading of Article 15, Article 42(2), Article 51(1) and Article 57(2) of Regulation No 207/2009 (Article 15, Article 42(2) and Article 57(2) of Regulation No 207/2009 now being, respectively, Article 18, Article 47(2) and Article 64(2) of Regulation 2017/1001) that, in proceedings for the revocation of a mark, it is for the proprietor of the mark, and not EUIPO of its own motion, as a rule, to establish genuine use of that mark (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 63).
29 It is common ground that the proprietor is the best placed — and in some cases the only party able — to furnish specific proof in support of the assertion that he has made genuine use of his mark or to set out the proper reasons for non-use of the mark (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 62).
30 Similarly, the Court of Justice has held that the conclusion must be that since Rule 40(5) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 19(1) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)) provided that proof of genuine use was to be made out by the proprietor of the mark, that rule merely specified a principle relating to the burden of proof which, far from disregarding Regulation No 207/2009, on the contrary derived from the provisions and scheme of that regulation (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 64).
31 In those circumstances, the Court must find that the rule that EUIPO is to examine the facts of its own motion, as laid down in Article 76(1) of Regulation No 207/2009, does not apply to the question of proof of genuine use of the mark in revocation proceedings brought before EUIPO (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 65).
32 In the second place, it is appropriate to examine whether account should have been taken of the evidence submitted late before the Cancellation Division, as the applicant alleges.
33 Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of the EU trade mark must be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. Under Rule 40(5) of Regulation No 2868/95, ‘in the case of an application for revocation based on Article 5[1](1)(a) of [Regulation No 207/2009], [EUIPO] shall invite the proprietor of the [EU] trade mark to furnish proof of genuine use of the mark, within such period as it may specify’ and ‘if the proof is not provided within the time limit set, the [EU] trade mark shall be revoked’.
34 However, Article 76(2) of Regulation No 207/2009 provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
35 It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgments of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 22; of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 77; and of 4 May 2017, Kasztantowicz v EUIPO — Gbb Group (GEOTEK), T‑97/16, not published, EU:T:2017:298, paragraph 25).
36 In stating that it ‘may’ decide to disregard evidence, Article 76(2) grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account (judgments of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 23; of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 78; and of 4 May 2017, GEOTEK, T‑97/16, not published, EU:T:2017:298, paragraph 26).
37 With regard, more specifically, to the submission of evidence of genuine use of the mark in revocation proceedings brought on the basis of Article 51(1)(a) of Regulation No 207/2009, it should be noted, first of all, that that regulation does not contain any provisions specifying the time period within which such evidence must be adduced.
38 Rule 40(5) of Regulation No 2868/95 provides in that regard that EUIPO is to invite the proprietor of the EU trade mark to furnish proof of genuine use of the mark, within such period as it may specify. The rule further states, in the second sentence, that if the proof of use of the mark is not provided within the time limit set by EUIPO, the mark must be revoked.
39 Although it does follow from the wording of that provision that, where no proof of the use of the mark in question is produced within the time period set by EUIPO, it must, as a rule, revoke the mark of its own motion, this is not required where evidence of that use is produced within that time (judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 86, and of 4 May 2017, GEOTEK, T‑97/16, not published, EU:T:2017:298, paragraph 29; see also, to that effect, judgment of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraphs 27 and 28).
40 According to the case-law, where EUIPO is called upon to rule on an application for revocation, the taking into account of evidence of use of the mark, which, although not submitted within the time limit set by EUIPO, is submitted at a later stage of the proceedings by way of complement to the evidence submitted within that time limit, is particularly likely to be justified where EUIPO considers, first, that the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the application for revocation and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (see, to that effect, judgments of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 33, and of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraphs 113 and 114).
41 In the present case, it is common ground that only the letter sent by fax on 21 November 2011 was produced by the applicant before the Cancellation Division within the period specified by the latter.
42 In that regard, it must be recalled that pursuant to Rule 22(3) and (4) of Regulation No 2868/95 (now Article 10(3) and (4) of Delegated Regulation 2017/1430), applicable to revocation proceedings under Rule 40(5) of the regulation, proof of use must relate to the place, time, extent and nature of use of the mark and is confined, in principle, to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 217/1001).
43 The file shows that the letter submitted within the prescribed period is a five-page document. Upon reading the first page of that letter, it is clearly indicated that it includes a list of evidence to prove genuine use of the mark at issue and that most items of evidence refer to a website operated by the proprietor of the mark. In addition, in its fax of 23 November 2011, the applicant’s representative explained that the document submitted within the prescribed period was ‘a letter with a list of evidence’ together with, in principle, ‘items of evidence’.
44 The list of evidence starts on the third page of the letter of 23 November 2011. Before that list, it is stated that a large number of domain names containing the sign bittorrent, which belong to the proprietor of the mark at issue, are linked to the website ‘bittorrent.net’. Also mentioned are 17 domain names and a few sentences describing the homepage of the website ‘bittorrent.net’. The list of evidence sets out 14 categories of items of evidence. For each category, the documents that are supposedly items of evidence capable of establishing genuine use of the mark are presented, described and explained in a few lines.
45 The document clearly contains only statements that are not substantiated by any supporting evidence capable of adducing proof of the place, time, extent and nature of use of the mark at issue, especially because the evidence in question was submitted, in the present case, three days after the prescribed period expired. The Board of Appeal was thus correct in finding and concluding, in paragraphs 53 and 70 of the contested decision, that no proof was furnished in due time before the Cancellation Division.
46 It should be noted, in the present case, that the applicant was not in a situation where, after initial relevant evidence was submitted within the period specified by the Cancellation Division and after seeing that evidence challenged by the other party as insufficient, it decided to submit additional evidence after the period expired when it filed its observations (see, to that effect, judgment of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484). Similarly, the applicant was also not in a situation where, before the Cancellation Division, it had submitted initial evidence of use of the contested mark within the prescribed period, accompanied by remarks expressing reservations as to confidentiality and declaring that it was able to produce other documents where necessary (see, to that effect, judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593). Therefore, in the present case, unlike in those situations, all the items of evidence, except the letter that was meant to describe them, were submitted after the expiry of the period specified by the Cancellation Division.
47 Moreover, the applicant cannot criticise the Board of Appeal for failing to make an evaluation that, ‘on the basis of the matters set out’ in the present case, ‘resulted in a decision favourable to the applicant’. First, as the Board of Appeal observed, the applicant was granted an extension of time for lodging proof of use of the mark at issue, so that it had an additional month — that is to say four months in total — to arrange for the collection and transmission of the evidence. Moreover, as the Board of Appeal pointed out, the period expired in the present case on a Saturday, 19 November 2011, meaning that the applicant had two additional days to produce such proof (until Monday 21 November 2011).
48 Next, EUIPO had duly informed the applicant, by letter of 19 July 2011, that it was ‘required to submit the required evidence of use in reply to the request within three months of receipt of this communication’ and that ‘if no evidence of use [was] submitted within this period, the [EU] mark w[ould] be revoked’. That letter also included guidance on how to provide evidence in a timely manner. Consequently, the applicant knew not only what documents it must submit, but also what the consequences of late submission of evidence were.
49 Lastly, as the Board of Appeal stated, the only reason given by the applicant for the late submission of the evidence in question is that the fax machine did not work properly.
50 In that regard, contrary to the applicant’s contention that the transmission of a significant amount of documents by fax entails a risk, the Board of Appeal rightly found that the late submission of the supporting documents at issue was due to the applicant (paragraph 56 of the contested decision).
51 Indeed, the actions of a representative acting on behalf and in the name of the proprietor of an EU trade mark must be regarded as being the actions of that proprietor (see judgment of 28 June 2012, Constellation Brands v OHIM (COOK’S), T‑314/10, not published, EU:T:2012:329, paragraph 18 and the case-law cited). In the present case, the fax machine at issue was an internal instrument of the law firm representing the applicant and, therefore, that law firm is responsible for the machine (see, to that effect, order of 22 January 2015, GEA Group v OHIM (engineering for a better world), T‑488/13, EU:T:2015:64, paragraph 33). Moreover, while admittedly, as the applicant argued, even after an inspection, it cannot be ruled out that the fax machine will not function for the next transmission, it is clear 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 applicant could have taken reasonable steps to guard against the risk of failing to comply with the time limit specified that may be caused by the transmission of a large amount of supporting documents.
52 Accordingly, the Board of Appeal duly took into account all the relevant circumstances concerning the evidence produced late in the present case.
53 Moreover, the other arguments of the applicant seek to allege that EUIPO had at its disposal other items in addition to the letter of 21 November 2011, namely the items submitted by the intervener before EUIPO, those submitted before the Landgericht Berlin (Regional Court, Berlin) in 2010 and the ones submitted by the applicant in May 2008 before EUIPO in opposition proceedings against the intervener.
54 With regard to the items produced by the intervener, the applicant relies on an extract from the website ‘bittorrent.net’ dated 22 June 2011, submitted together with its application for revocation, the fact that the intervener had carried out a search concerning that website on 18 October 2011 and the fact that it had never disputed that some of the evidence produced late was accessible online at the material time.
55 In that regard, as has been recalled in paragraphs 28 and 29 above, 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, 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. Furthermore, as EUIPO rightly claims, the fact that the intervener may not have disputed that some evidence produced late was accessible online at the material time is irrelevant because it is for the proprietor of the contested mark to prove genuine use thereof by submitting documents such as those mentioned in Rule 22 of Regulation No 2868/95. In any event, as EUIPO rightly argued, it is clear from the file that the intervener has constantly contested the admissibility and probative value of the evidence submitted by the applicant.
56 With regard to the items produced before the Landgericht Berlin (Regional Court, Berlin) in 2010, which resulted in the judgment of 15 March 2011 in favour of the applicant, it must be observed, as the intervener rightly stated, that the applicant seems to consider that the filing of those items before the national court exempted it from having to submit relevant proof of use before EUIPO. First, as has been recalled in paragraph 55 above, in revocation proceedings, it is for the proprietor of the contested mark to establish genuine use of that mark by submitting evidence before EUIPO. Secondly, it is clear that the mark contested before the Landgericht Berlin (Regional Court, Berlin) was not the mark at issue but the German mark bittorrent. Similarly, the territory at issue was Germany, not the relevant territory in the present case, namely the European Union. In addition, the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (judgment of 5 December 2000, Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraph 47). In the present case, even if the rules of substantive law and the rules of evidence applied by the German courts were similar to EU law requirements, the national proceedings in question were based on a set of documents whose content EUIPO could not possibly have known. Accordingly, the applicant’s arguments in that regard must be rejected.
57 With regard to the items produced before EUIPO on 8 May 2008 in Opposition Proceedings No 000 960 239, according to the case-law, if a party explicitly refers to documents already submitted in other proceedings before EUIPO, such documents are deemed to form part of the case file (judgment of 23 October 2002, Institut für Lernsysteme v OHIM — Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraphs 31 and 32). In the present case, it is clear that the applicant referred to the items produced in the said opposition proceedings only before the Board of Appeal. In accordance with the case-law cited in paragraph 28 above, it was not for the Cancellation Division, of its own motion, to determine genuine use of the contested mark by relying on documents submitted in other proceedings. Thus, this circumstance cannot be accepted as being in the applicant’s favour. In addition, as EUIPO rightly contends, those documents — a very brief description of the website ‘bittorrent.net’ and three extracts from that website — are, in the absence of any other information, insufficient to prove genuine use of the contested mark.
58 It follows that the Court must reject the applicant’s arguments alleging that the items produced by the intervener before EUIPO, as well as those produced before the Landgericht Berlin (Regional Court, Berlin) in 2010 and before EUIPO in May 2008, were capable of establishing genuine use of the contested mark in the present case.
59 In the light of the above, the applicant cannot legitimately criticise the Board of Appeal for deciding that in the present case the items of evidence produced late before the Cancellation Division did not have to be taken into account.
60 In the third place, it should be examined whether the evidence submitted for the first time before the Board of Appeal should have been taken into account, as the applicant claims.
61 It should be recalled that the applicant submits that, since the evidence produced before the Cancellation Division, although late, should have been taken into account, the evidence submitted in the context of the appeal proceedings was supplementary ‘additional’ evidence which, in accordance with the case-law, is to be taken into consideration if, as in the present case, it is relevant.
62 In that respect, according to the case-law, it remains possible to submit evidence of use of the mark in addition to the evidence adduced within the time limit set by EUIPO under Rule 40(5) of Regulation No 2868/95 after expiry of that time limit (see, to that effect, judgments of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraphs 28 and 30; of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 88; and of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraphs 26 to 28).
63 Nevertheless, it is clear that, for the reasons set out in paragraphs 41 to 59 above, the Board of Appeal was fully entitled to find that the items of evidence produced late before the Cancellation Division did not have to be taken into account. Since no proof of use of the contested mark was filed before the Cancellation Division within the prescribed period and since the evidence filed at the appeal stage was not by way of complement to the evidence produced within that period, the applicant cannot argue that the evidence submitted before the Board of Appeal was additional evidence that should have been taken in account.
64 As to the arguments put forward by applicant regarding the alleged punitive nature of the decision to disregard the evidence produced late in the present case, it is clear that, in the light of paragraphs 46 to 52 above, it is not apparent from the contested decision, contrary to the applicant’s assertions, that the decision to disregard the evidence produced late was punitive in nature.
65 Moreover, a party who has omitted to observe a time limit vis-à-vis EUIPO may, upon request, obtain the continuation of proceedings under Article 82 of Regulation No 207/2009 (now Article 105 of Regulation 2017/1001), provided that at the time the request is made the omitted act has been carried out and the fee for continuation of the proceedings has been paid. Furthermore, a party who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-à-vis EUIPO may lodge a request for restitutio in integrum under Article 81 of the regulation (now Article 104 of Regulation 2017/1001), if the obstacle to compliance has the direct consequence of causing the loss of any right or means of redress and provided that the fee for re-establishment of rights has been paid.
66 It follows from all the above that the first plea in law must be rejected.
Second plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009
67 With regard to the arguments presented in the context of the first plea in law, and in accordance with paragraphs 33 to 40 above, the Board of Appeal rightly held, in paragraphs 70 and 71 of the contested decision, that no genuine use of the mark at issue had been proven by the applicant and that, consequently, the mark had to be revoked pursuant to Article 51(1)(a) of Regulation No 207/2009 as of 24 June 2011.
68 Since the applicant’s arguments in the context of the second plea in law are based on all the items of evidence submitted late before EUIPO, and since they were rightly rejected by the Board of Appeal, they are ineffective.
69 It follows that the second plea in law must be dismissed, as must the action in its entirety.
Costs
70 Under Article 134(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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber),
hereby:
1. Dismisses the action;
2. Orders Hochmann Marketing GmbH, formerly Bittorrent Marketing GmbH, to pay the costs.
Frimodt Nielsen | Kreuschitz | Półtorak |
Delivered in open court in Luxembourg on 12 December 2017.
E. Coulon | | S. Frimodt Nielsen |