Dale Vince v European Union Intellectual Property Office (T-315/15)

Contents

Judgment of the general court (Eighth Chamber)17 November 2016^note(EU trade mark — Application for the EU word mark ELECTRIC HIGHWAY — Absolute grounds for refusal — Descriptive character — Lack of distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)In Case T‑315/15,Dale Vince, residing in Stroud (United Kingdom), represented by B. Longstaff, Barrister,vEuropean Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,THE GENERAL COURT (Eighth Chamber),composed of D. Gratsias (Rapporteur), President, M. Kancheva and N. Półtorak, Judges,Registrar: J. Weychert, Administrator,having regard to the application lodged at the Court Registry on 13 May 2015,having regard to the response lodged at the Court Registry on 21 December 2015,having regard to the Court’s written question to the applicant,having regard to the observations lodged by the applicant at the Court Registry on 28 September 2015,further to the hearing on 16 September 2016,gives the following

Judgment

Background to the dispute

1On 17 February 2012, the applicant, Mr Dale Vince, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2Registration as a mark was sought for the word mark ELECTRIC HIGHWAY.

3The goods and services in respect of which registration was sought are in Classes 9, 12 and 39 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

4By decision of 8 April 2014, the examiner rejected the application for registration of the mark applied for, on the grounds of Article 7(1)(b) and (c) of Regulation No 207/2009, in so far as that application concerned 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.

5On 6 June 2014, the applicant filed a notice of appeal against the examiner’s decision with EUIPO, pursuant to Articles 58 to 64 of Regulation (No) 207/2009.

6By decision of 3 March 2015 (‘the contested decision’), the Board of Appeal dismissed the appeal on the ground that the mark applied for came under the prohibitions referred to in Article 7(1)(b) and (c) of Regulation No 207/2009. In particular, the Board of Appeal took the view that the mark applied for consisted of a simple combination of words which comply with the rules of English syntax and would immediately be understood by the relevant public, composed of professionals but also English-speaking final consumers who own electric vehicles, as designating a public road equipped with charging stations positioned at regular intervals and intended for electric vehicles. 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. A simple internet search shows the widespread use of the words forming the mark applied for in this respect. In that context, according to the Board of Appeal, the mark applied for describes the kind and intended purpose of the services concerned. The Board of Appeal found that, account being taken of the descriptive character of the mark applied for, it also had to be considered to be devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.

Forms of order sought

7By application lodged at the Court Registry on 13 May 2015, the applicant brought the present action.

8The applicant claims that the Court should:— annul the contested decision;— allow registration of the mark applied for;— order EUIPO to pay the costs.

9EUIPO contends that the Court should:— dismiss the action;— order the applicant to pay the costs.

Law

Admissibility of the second head of claim

10EUIPO contends that the second head of claim concerning registration of the mark applied for is inadmissible.

11When questioned at the hearing, the applicant stated that the second head of claim should be understood as a reference to the obligations which would follow for the Board of Appeal from Article 65(6) of Regulation No 207/2009 in the event that the contested decision were to be annulled. Accordingly, that claim is not independent from the first head of claim seeking annulment of the contested decision and there is no need to give a ruling on it.

Substance

12In support of the action, the applicant relies on four pleas in law: the first three allege infringement of Article 7(1)(c) of Regulation No 207/2009 and the fourth alleges infringement of Article 7(1)(b) of that regulation. In particular, the first plea alleges a misunderstanding of the meaning of the mark applied for. The second plea alleges a misunderstanding of the services in question. In the context of the third plea, the applicant claims that the mark applied for is not descriptive in character, even taking into account its interpretation by the Board of Appeal. Lastly, the fourth plea alleges infringement of Article 7(1)(b) of Regulation No 207/2009.

13The first three pleas in law relate to the application of Article 7(1)(c) of Regulation No 207/2009 by the Board of Appeal and, therefore, it is appropriate to consider them together.

The first three pleas in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

14The applicant claims that the Board of Appeal gave an artificial and unrealistic meaning to the mark applied for, which is not immediately understood as referring to a road equipped with charging stations for electric vehicles. By contrast, the mark applied for should, he submits, be understood in a metaphorical sense. Furthermore, internet research carried out by the Board of Appeal does not show that the relevant public will attach, at present, the foregoing meaning to the mark applied for. The Board of Appeal, furthermore, infringed Article 75 of Regulation No 207/2009 by using evidence on which the applicant had not had the opportunity to comment. Lastly, according to the applicant, the meaning of the mark applied for cannot be taken into account in order to define the nature of the services concerned since those services are not linked to the concept of an ‘electric highway’.

15EUIPO disputes the merits of those pleas.

16Article 7(1)(c) of Regulation No 207/2009 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service must not be registered.

17Article 7(2) of Regulation No 207/2009 states that Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

18According to case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31).

19Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, pursuant to Article 7(1)(c) of Regulation No 207/2009, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).

20The 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 (judgment of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 17).

21It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (judgment of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 18).

22In the present case, the Board of Appeal found that the services concerned were aimed at professionals working in the field of energy supply and distribution and average consumers of electricity who use electrical vehicles. In addition, it is clear from paragraph 19 of the contested decision that the Board of Appeal considered that the relevant public was English-speaking. Those findings have not been called into question by the applicant.

23As regards the meaning of the mark applied for, the Board of Appeal found, in paragraph 11 of the contested decision, that the expression ‘electric highway’ complied with the rules of English syntax. Thus, the Board of Appeal took the view that the relevant public will interpret that expression according to its logical meaning and understand it to refer to a road equipped with charging stations for electric vehicles. According to the Board of Appeal, the need to recharge electric vehicles on a regular basis and the disadvantage resulting from the time required to that effect justify that interpretation.

24In that connection, it should be pointed out that given that the words comprising the mark applied for are common words and that they have been combined in a manner which complies with English syntax rules, the intellectual effort required to attribute a meaning to the mark applied for is not such that that mark should be regarded as being devoid of meaning. In that context, contrary to the assertions of the applicant, the relevant public, as defined by the Board of Appeal (see paragraph 22 above), may understand that expression as referring to a road equipped with charging stations for electric vehicles.

25Members of the relevant public who use electric vehicles are particularly likely to attribute such an interpretation to the mark applied for. That group of consumers is especially affected by the need to recharge their vehicles, sometimes in the course of a single journey, depending on the distance covered. In that respect, contrary to the claims of the applicant, the Board of Appeal was entitled to rely on well-known facts, such as the need for electric vehicles to be recharged and the disadvantage resulting from the time required to that effect. Given that the circumstances characterising the use of electric vehicles are well-known, the Board of Appeal is under no obligation to rely on specific evidence in that regard (see, to that effect, judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraphs 50 to 52).

26Such an interpretation of the mark applied for is sufficiently direct and specific to the services for which the mark was refused registration so that it enables the relevant public immediately to perceive, without further thought, a description of the kind and intended purpose of those services, as stated by the Board of Appeal in paragraphs 19 and 20 of the contested decision. Contrary to the claims of the applicant, that conclusion does not apply only to services relating to the ‘transmission, distribution and supply of electricity for vehicles’, but also to all the services referred to in paragraph 4 above. First, services relating to the ‘transmission, distribution and supply of electricity’, which are also covered by the application for registration of the mark at issue, include services relating to the ‘transmission, distribution and supply of electricity for vehicles’, with the result that a mark describing the latter services cannot be registered in respect of the former services. The same applies to services of ‘transmission, distribution and supply of hydro-electricity’ which is simply electricity produced from specific sources. Secondly, the storage and transportation of electricity are essential functions of a road equipped with charging stations for electric vehicles and, accordingly, the mark applied for also describes those services.

27In those circumstances, the Court holds that the Board of Appeal correctly applied Article 7(1) of Regulation No 207/2009 in assessing the descriptive character of the mark applied for, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the services concerned (see paragraph 20 above).

28In addition, the applicant’s argument that the mark applied for would rather be perceived in a ‘metaphorical’ sense, characterised by combining electricity with a highway, does not undermine that conclusion. A ‘metaphorical’ sense derived from the mark at issue still conveys the idea of a ‘highway for electricity’. That idea nevertheless 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.

29The applicant’s argument alleging that the Board of Appeal failed to communicate to him one of the four online reviews it referred to in paragraph 18 of the contested decision, with the result that his rights of defence were infringed, cannot be accepted. In that regard, it should be noted that the Board of Appeal based its assessment of the relevant public’s understanding of the mark applied for on the meaning of the words of which it is composed and on well-known facts regarding the use of electric vehicles (paragraphs 15 to 17 of the contested decision).

30In that context, the Board of Appeal, in paragraph 18 of the contested decision, referred to four online reviews concerning the actual use of the expression ‘electric highway’ with the objective of confirming the assessments set out in paragraphs 15 to 17 of that decision. Those reviews demonstrate, according to the Board of Appeal, actual use of the expression at issue in the sense set out in paragraph 23 above. As was stated in paragraphs 23 to 27 above, the Board of Appeal did not err by finding, on the basis of its assessments set out in paragraphs 15 to 17 of the contested decision, that the relevant public would understand the mark applied for to be descriptive of the relevant services. Accordingly, although it is true that a Board of Appeal may base its decision only on matters of fact or of law on which the parties were able to set out their view and that a Board of Appeal is required to notify the parties of all facts it assembles of its own motion which are intended to serve as a basis for its decision (judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 42 and 43), the fact remains that failure to communicate just one out of four online reviews to which the Board of Appeal made reference in order to establish the actual use of the mark applied for in a way that is descriptive of the relevant services does not constitute an infringement of the rights of the defence capable of justifying the annulment of the contested decision.

31Lastly, even if it were acknowledged that, as the applicant submits, those references are capable, at most, of demonstrating that the mark applied for might in future be used in a way that is descriptive of the relevant services, that in itself would be sufficient to refuse registration of the mark on the basis of Article 7(1)(c) of Regulation No 207/2009. For EUIPO to refuse registration of a trade mark on the basis of Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications composing the mark referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32). As is apparent from paragraphs 23 to 27 above, the Board of Appeal did not err by finding that that is the case in this instance.

32It is clear from the foregoing considerations that the first three pleas must be rejected.

The fourth plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

33According to the applicant, since the Board of Appeal’s assessment of the lack of distinctive character of the mark applied for is based on that mark’s alleged descriptive character, the merits of the first three pleas mean that the fourth plea is also well founded. The mark applied for has no particular meaning.

34EUIPO disputes the merits of that plea.

35It is apparent from the analysis regarding the first three pleas that those pleas are unfounded and therefore that the Board of Appeal did not err in refusing registration of the mark applied for on the basis of Article 7(1)(c) of Regulation No 207/2009.

36Accordingly, since the Board of Appeal was fully entitled to find that the ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009 applied, there is no need to examine the plea alleging infringement of Article 7(1)(b) of that regulation (judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 32). As is stated in Article 7(1) of Regulation No 207/2009, it is sufficient for one of the absolute grounds for refusal listed in that provision to apply for the sign at issue not to be eligible for registration as an EU trade mark (order of 17 January 2013, Abbott Laboratories v OHIM, C‑21/12 P, not published, EU:C:2013:23, paragraph 76).

37It follows that the action must be dismissed in its entirety.

Costs

38Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

39Since the applicant has been unsuccessful, he must be ordered to pay the costs in accordance with the form of order sought by EUIPO.

Operative part

On those grounds,THE GENERAL COURT (Eighth Chamber)hereby:

1.Dismisses the action;

2.Orders Mr Dale Vince to pay the costs.

Delivered in open court in Luxembourg on 17 November 2016.