The matter at hand

In August 2023, Edison filed an application for registration of an EU trade mark for the figurative mark ‘EDISON’, for the goods under Class 4 of the Nice Classification. This registration was completed in 2013. In June 2015, Edison submitted a request to include ‘Electrical energy’ in Class 4. The examinator rejected the request, asserting that it would expand the list of goods claimed during the registration. Edison lodged an appeal. 

The Board of Appeal rejected Edison's appeal, contending that 'electrical energy' was not expressly mentioned in the wording or alphabetical list of goods in Class 4 of the eighth edition of the Nice Classification. Consequently, they reasoned that Edison could not have intended to include 'electrical energy' when initially submitting the trade mark application. Moreover, the Board of Appeal asserted that, during the application period, the use of electricity to power engines was marginal within the European Union. They found Edison's evidence insufficient to demonstrate that electrical energy was part of the goods in Class 4, even as an 'alternative fuel.' Edison pursued the matter in the General Court, yet this court also dismissed Edison's plea.

Edison appealed before the Court of Justice, relying on two main grounds. The first ground reiterated Edison's argument before the General Court, asserting that the exclusion of electrical energy was based on an incorrect interpretation of the terms 'illuminates,' 'fuels (including motor spirit),' and 'carburants'/'motor fuel' within the eighth edition of the Nice Classification. The second ground of appeal dealt with procedural aspects. Edison claimed that its procedural rights were overlooked, and Article 75 of the Regulation No 207/2009 was violated.

The judgment of the ECJ

The ECJ dismisses both grounds of appeal. Concerning the first ground, where Edison criticized the General Court for concentrating on 'ontological' characteristics rather than adopting a 'functional' approach, the ECJ asserts that Edison fails to pinpoint the specific points in the judgment under appeal addressing its argument. Additionally, the ECJ upholds hat “in accordance with their customary and ordinary meaning, the terms ‘illuminants’, ‘fuels’ and ‘carburants’/’motor fuel’ do not include electrical energy.”(paragraph 46). Despite functional similarities, electrical energy is deemed outside the literal meaning of the concept 'fuel’. Regarding the second ground of appeal, the ECJ rejects Edison's argument as inadmissible since it reproduces verbatim the arguments presented before the General Court without identifying specific errors of law (Mamoli Robinetteria v Commission, C-619/13 P). 

Furthermore, the ECJ highlights specific paragraphs in which the General Court thoroughly analyses the exclusion of electricity from Class 4 of the eighth edition of the Nice Classification. Additionally, the ECJ aligns with the view of the General Court that “ ‘certain’ car models powered partially or entirely by electrical energy had already been placed on the market”,  yet “the development, on the European Market, of car models powered by electrical energy had not ‘in reality’ taken place until several years after the application for registration at issue had been filed.” (paragraph 67). Consequently, the ECJ concludes that the General Court's analysis remains consistent and devoid of contradiction, leading to the rejection of the second ground of appeal.