When you hear the name BitTorrent, you tend to think of piracy, torrenting, and possibly arguments that the communications protocol isn't just used for downloading illegal files. But there was another company called Bittorrent out there, and the two have been locked in a legal battle over the EU trademark for quite some time. A battle that BitTorrent Inc (the well known one) just won.
The battle stems from a trademark for the term 'BitTorrent' filed by German Company Bittorrent Marketing GmbH, filed with the EU Intellectual Property Office back in 2003. The idea being that the company could use the term for a variety of uses, including marketing, advertising, retail, mail order and Internet sales, to film, television and video licensing, plus “providing of memory space on the internet”. That trademark was published in 2004 and registered in 2006.
In 2011, BitTorrent Inc, responsible for uTorrent and the like, filed an application for the trademark to be cancelled on the grounds that it had not been “put to genuine use in the European Union in connection with the services concerned within a continuous period of five years.”
The EUIPO notified Bittorrent Marketing GmbH, informing them they had three months to submit evidence of the trademark's use. Bittorrent Marketing GmbH then successfully applied for an extension, which meant a deadline of November 21st 2011. Problems arose, however, when the company sent its evidence by fax on the very last day - a fax that included a five page letter and 69 pages of evidence. Something went wrong with the fax machine, however, and it continued to report errors. The same documents then arrived by post several days later which was technically too late.
BitTorrent Inc's application to have the trademark revoked was upheld in September 2013, but Bittorrent Marketing GmbH (which had since been renamed Hochmann Marketing GmbH) appealed against that decision in November of the same year. Two years later (2015) the EUIPO maintained that Hochmann hadn't submitted the relevant proof on time, so the evidence could not be taken into account.
Hochmann naturally wasn't happy about that and demanded that both the decision be annulled and that the EUIPO and BitTorrent pay its legal costs. EUIPO and BitTorrent demanded the opposite. Yesterday, however, the EU General Court (Third Chamber) sided with the EUIPO and BitTorrent Inc.
It noted that Bittorrent Marketing/Hochmann had been given extra time to file the evidence, but hadn't done so. What's more it was noted that the evidence produced was not enough, and that Bittorrent Marketing/Hochmann had previously been informed of the consequences for not providing adequate evidence on time. So the decision to revoke the trademark remains in effect, and Hochmann has to pay the resulting legal costs.
As TorrentFreak notes, this isn't the first time BitTorrent has beaten Hochmann in court. Back in 2014 it won $2.2 million in damages in a US court, after a judge ruled the latter was guilty of 'cybersquatting' and trying to mislead consumers hoping to use BitTorrent services. [TorrentFreak]