Appeal brought on 15 February 2019 by Edison SpA against the judgment of the General Court (Third Chamber) delivered on 7 December 2018 in Case T-471/17, Edison v EUIPO (EDISON)

(Case C-121/19 P)

Language of the case: Italian

Parties

Appellant: Edison SpA (represented by: D. Martucci, F. Boscariol de Roberto, avvocati)

Other party to the proceedings: European Union Intellectual Property Office

Form of order sought

set aside the judgment under appeal, give final judgment on the matter and uphold the action, holding that ‘electricity’ comes under Class 4 of the Eighth Edition of the Nice Classification and consequently find that trade mark No 003315991 owned by Edison S.p.A. covers, inter alia, ‘electricity’;

in the alternative, set aside the judgment under appeal and refer the case back to the General Court;

in any event, order EUIPO to pay the costs.

Pleas in law and main arguments

1.    The General Court erred in stating that the mention of the product ‘electricity’ in the non-exhaustive list drawn up by EUIPO for the submission of declarations for the purposes of Article 28(8) EUTMR (paragraphs 41, 46 and 54) proves that electricity, in its everyday and usual meaning, is not included in Class 4 of the Eighth Edition of the Nice Classification. In the first place, the error in law arises from the fact that the appellant’s application to restrict the list of goods designated was submitted on 15 June 2015, while the document to which EUIPO refers was established with Communication No 1/2016 of 8 February 2016. In the second place, it is also an error in law to assume that the exclusion of a term from the list constitutes evidence, when it is no more than a set of non-binding interpretations.

2.    The General Court wrongly held that only tangible goods that spontaneously produce light of themselves may be considered ‘illuminants’. The error in law lies in the fact that it is the competent authorities and economic operators that classify goods in respect of their ability to provide illumination, classifying electricity as a commodity which generates light and profit, and the tangibility of that commodity in the purely physical sense is irrelevant.

3.    The General Court erred in law since, in so far as if it is accepted that ‘fuel’ includes fuel for motors, it is clear that the term ‘fuel’ is to be understood in such a broad manner as to include goods, such as electricity, which by their nature do not cause motors to start by means of combustion.

4.    The General Court made an error of interpretation by considering that electricity is not covered by the term ‘motor fuel’, completely overlooking its functional characteristics.

5.    The General Court manifestly erred in law by holding that the evidence provided by the appellant was insufficient to demonstrate that electricity is included in Class 4.

6.    In addition, the General Court also based its decision on Document 1 submitted by EUIPO, holding that the document was from August 2003, despite the fact that it was clearly dated June 2003.

7.    The General Court merely endorsed a legal situation and decisions for which insufficient grounds were given, despite the admission of evidence submitted by the appellant and EUIPO. To assert that there are electronic vehicles commercially available and then claim that economic operators (the same producers of those vehicles) do not consider electricity to be a fuel, even an alternative fuel, goes against all logic and means that the decisions of EUIPO and the General Court are not substantiated.

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