"Electrical energy" not wrongly excluded from Class 4 "motor fuel" of 8th edition Nice Classification
07-01-2021 Print this page
“Electrical energy” has not been wrongly excluded of the goods in Class 4 of the eighth edition of the classification of Nice: the argument that the General Court failed to adopt a ‘functional’ approach is unfounded, however, as rightly held by the General Court in paragraph 29 of the judgment under appeal, it is apparent from paragraph 61 of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), that the goods for which the protection by the trade mark is sought must be identified by the applicant in its application for registration with sufficient clarity and precision in order to enable the competent authorities and the economic operators, on that basis alone, to determine the extent of the protection sought, the complaint directed against a ground expressed for the sake of completeness cannot lead to the annulment and is therefore ineffective, no contradictory reasoning by the General Court, not shown or alleged that that assessment of evidence was vitiated by a distortion, insufficiently explained that the General Court erred in law by referring to the judgment, the argument by which Edison merely reproduces unchanged the complaint raised at first instance rejected as inadmissible, value that the General Court attached to the evidence does not come within the jurisdiction of the Court of Justice. Complaints regarding infringement of its procedural rights inadmissible: Edison merely reproduces verbatim the arguments that it had already raised before the General Court. Complaint regarding infringement of Article 75 of the EU Trade Mark Regulation ungrounded: the General Court carried out an extensive analysis.
On 19 August 2013, Edison SpA ('Edison') registered the Union trade mark EDISON for all goods in Class 4 of the Nice Classification. On 15 June 2015, Edison requested EUIPO to redefine the designated goods for which the trade mark was registered. That request was refused on the ground that the inclusion of "electrical energy" would lead to an extension of the list of goods covered by the registration of the trade mark. Edison seeks to have set aside the judgment of the General Court of the European Union dismissing the action brought by Edison against the decision of EUIPO concerning the Union figurative mark EDISON.
By its first ground of appeal, Edison submits that the General Court erred in excluding "electrical energy" from the goods in Class 4 of the eighth edition of the Nice Classification. In that regard, the Court of Justice ruled as follows. Edison's argument that the General Court wrongly failed to adopt a "functional" approach to assessing the scope of the terms "fuels (including motor gasoline)", "illuminants" and "motor fuels" is rejected by the Court of Justice as unfounded, since Edison did not indicate to which specific points of the judgment under appeal at which its arguments are directed. The argument that the General Court erred in law in paragraphs 41, 46 and 54 is ineffective since complaints against a ground expressed for the sake of completeness in a decision of the General Court cannot lead to the annulment of that decision. The argument that the reasoning in paragraph 44 is contradictory is based on an incomplete reading of the judgment. The argument that the General Court failed to take account of the fact that "electrical energy" is included in the indicative and non-exhaustive list published by EUIPO is inadmissible. The General Court has exclusive jurisdiction to assess the value of the evidence and Edison did not establish or claim that the assessment was vitiated by a distortion. The argument that the General Court erred in basing its reasoning, in paragraph 48 of the judgment under appeal, on the judgment of 14 March 2017 was not sufficiently clear and dismissed as inadmissible. The argument by which Edison reproduced unchanged the complaint raised at first instance before the General Court is rejected as inadmissible, since Edison does not identify any error of law made by the General Court in that regard in the judgment under appeal. The argument challenging the value which the General Court attaches to the evidence is inadmissible, since that does not come within the jurisdiction of the Court of Justice.
As regards the second ground of appeal, the Court of Justice finds that there has been no infringement of procedural rights since since Edison merely repeated the arguments already put forward before the General Court without indicating the error of law. The argument is rejected as inadmissible. Moreover, the Court of Justice finds that there has been no infringement of Article 75 of the EU Trade Mark Regulation since the General Court carried out an extensive analysis. The argument is rejected as unfounded.
Nelisa de Bruin
