BitTorrent in trademark win at EU General Court

The company behind the BitTorrent peer-to-peer file-sharing protocol was handed a win by the EU General Court after it refused an application to annul a contested decision.

Germany-based Hochmann Marketing, previously known as Bittorrent Marketing, had applied for an EU trademark for the word ‘bittorrent’.

The mark, which covered classes 35 (marketing), 38 (media and press agency services) and 42 (programming and licensing of software), was published in June 2006.

Five years later, California-headquartered BitTorrent attempted to revoke the mark based on non-use.

Hochmann Marketing originally had three months to submit evidence of use, but filed a request to extend the time limit by one month.

On the last day of the time limit, Hochmann Marketing sent a five-page letter by fax which referred to attached documents, but the documents were not attached.

Hochmann Marketing’s representative said that he had sent the five-page letter, together with 69 pages of evidence. The European Union Intellectual Property Office (EUIPO) then received the evidence by post.

In September 2013, the EUIPO’s Cancellation Division revoked the mark for the goods in the three classes, so Hochmann Marketing filed a notice of appeal.

The Fifth Board of Appeal of the EUIPO found that Hochmann had not submitted any relevant proof before the Cancellation Division within the time limit specified and that any evidence submitted to the board couldn’t be taken into account.

However, for the sake of completeness, the Board of Appeal assessed the evidence and held that it did not prove use of ‘bittorrent’.

Hochmann Marketing appealed to the EU General Court, arguing that the EUIPO should have taken account of the evidence submitted late before the Cancellation Division.

The General Court said that the EUIPO may disregard facts or evidence which are not submitted in due time and that only the letter sent by fax, not the 69 additional pages of evidence, was produced within the period specified.

It added: “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.”

Hochmann Marketing had also argued that the EUIPO had other items which established genuine use.

These items included documents submitted by BitTorrent, documents submitted before a German court in 2010 and items submitted by the applicant in May 2008 before the opposition proceedings.

But the General Court said that it must reject arguments that these items were capable of establishing genuine use and said they were insufficient to prove use.

Hochmann Marketing’s action was dismissed and the company was ordered to pay costs.

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