For anyone familiar with the BitTorrent brand, there can
only be one company that springs to mind. BitTorrent Inc., the
outfit behind uTorrent that still employs BitTorrent creator Bram
Cohen, seems the logical choice, but not everything is
Back in June 2003, a company called BitTorrent Marketing GmbH
filed an application to register an EU trademark for the term
BitTorrent with the European Union Intellectual Property Office
(EUIPO). The company hoped to exploit the trademark for a wide
range of uses from marketing, advertising, retail, mail order and
Internet sales, to film, television and video licensing plus
providing of memory space on the internet.
The trademark application was published in Jul 2004 and
registered in June 2006. However, in June 2011 BitTorrent Inc.
filed an application for its revocation on the grounds that the
trademark had not been put to genuine use in the European Union in
connection with the services concerned within a continuous period
of five years.
A year later, the EUIPO notified BitTorrent Marketing GmbH that
it had three months to submit evidence of the trademarks use. After
an application from the company, more time was given to present
evidence and a deadline was set for November 21, 2011. Things did
not go to plan, however.
On the very last day, BitTorrent Marketing GmbH responded to the
request by fax, noting that a five-page letter had been sent along
with 69 pages of additional evidence. But something went wrong,
with the fax machine continually reporting errors. Several days
later, the evidence arrived by mail, but that was technically too
In September 2013, BitTorrent Inc.s application for the
trademark to be revoked was upheld but in November 2013, BitTorrent
Marketing GmbH (by now known as Hochmann Marketing GmbH) appealed
against the decision to revoke.
Almost two years later in August 2015, an EUIPO appeal held that
Hochmann had submitted no relevant proof before the specified
deadline that the trademark had been in previous use. On this
basis, the evidence could not be taken into account.
[The appeal] 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, EUIPO documentation reads.
However, Hochmann Marketing GmbH wasnt about to give up,
demanding that the decision be annulled and that EUIPO and
BitTorrent Inc. should pay the costs. In response, EUIPO and
BitTorrent Inc. demanded the opposite, that Hochmanns action should
be dismissed and they should pay the costs instead.
In its decision published yesterday, the EU General Court (Third
Chamber) clearly sided with EUIPO and BitTorrent Inc.