In February 2012, the applicant, Mr Dale Vince, filed an EUTM for the word mark ELECTRICHIGHWAY.
Registration was sought for goods and services in in Classes 9, 12
and 39. The brand is used by Mr Vince's company in connection
with the provision of an electric car-charging network at motorway
stations across the United Kingdom.
In April 2014, the application was rejected for services
relating to the 'transmission, distribution and supply of
electricity; transmission, distribution and supply of
hydro-electricity; storage, transportation and delivery of
electricity; transmission, distribution and supply of electricity
for vehicles' in Class 39.
On appeal, the Board of Appeal dismissed the appeal. In
particular, it took the view that the mark applied for consisted of
a simple combination of words which would immediately be understood
by the relevant public, composed of professionals but also
English-speaking consumers who own electric vehicles, as
designating a public road equipped with charging stations
positioned at regular intervals and intended for electric
According to the Board of Appeal, the need to recharge the
batteries of an electric vehicle after travelling a certain
distance constitutes a challenge which those involved seek to
resolve, in particular by providing for the supply of electricity
at regular intervals along roads. It cited an internet search which
showed the widespread use of the words ELECTRICHIGHWAY. In
that context, according to the Board of Appeal, the mark applied
for described the kind and intended purpose of the services
concerned. Considering the descriptive character of the mark, it
was also considered devoid of distinctive character.
The applicant appealed to the General Court and argued that the
Board of Appeal gave an artificial and unrealistic meaning to the
mark applied for, which would not immediately be understood as
referring to a road equipped with charging stations for electric
vehicles. By contrast, the mark applied for should, he submitted,
be understood in a metaphorical sense, as a conceptual electric
highway. He also claimed that the internet research carried out by
the Board of Appeal did not show that the relevant public will see
the words ELECTRICHIGHWAY as having a descriptive meaning.
The General Court found the descriptive character of a sign can
only be assessed, first, by reference to the way in which it is
understood by the relevant public and, second, by reference to the
goods or services concerned. It held that the Board of Appeal
correctly found that the mark applied for was descriptive by
reference to the way it is understood by the relevant public and by
reference to the services concerned. With regards to the
applicant's 'metaphorical arguments', the General Court
said, a 'metaphorical' sense derived from the mark at issue
still conveys the idea of a 'highway for electricity'. That
idea describes in a direct and specific manner the transmission,
distribution, storage and supply of electricity and
hydro-electricity, the essential activities of the services in
respect of which the mark was refused registration. As such, the
General Court rejected the appeal and dismissed the action in its
entirety; the mark was not allowed registration for the
aforementioned services in Class 39.
Case T -315/15
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1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
The General Court has upheld a Board of Appeal decision dismissing an opposition to the figurative EUTM mark CHOCOLOVE, based on earlier marks for CHOCOLATE, CSOKICSÖ and a figurative mark CHOCOLATE BROWN.
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