In February 2012, the applicant, Mr Dale Vince, filed an EUTM for the word mark ELECTRIC HIGHWAY. 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 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. It cited an internet search which showed the widespread use of the words ELECTRIC HIGHWAY. 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 ELECTRIC HIGHWAY 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