CJEU: ‘EZMIX’ devoid of distinctive character and descriptive for software used in music production

In an interesting decision (only available in Swedish and French) handed down by the Court of Justice of the European Union (CJEU) in November 2018, it was considered whether the word mark ‘EZMIX’ could be registered as an EU trade mark for goods and services relating to software used for music production. The following post seeks to briefly analyse the CJEU’s position.

The earlier stages

In April 2015, Toontrack Music sought to register the word mark ‘EZMIX’ for goods and services in Classes 9, 15 and 42 of the Nice Classification. The EUIPO examiner denied registration, on grounds that the sign would both lack distinctive character and be descriptive of the goods and services, in accordance with what is now Article 7(1) (b) and (c) in Regulation 2017/1001 on the EU Trade Mark (EUTMR). Toontrack Music amended its application by limiting the designated word mark to goods and services in Classes 9 and 42 of the Nice Classification. The Fifth Board of Appeal of the EUIPO dismissed the appeal. Further to another appeal to the General Court, also this decided to dismiss the appeal in its entirety.

The CJEU appeal

Toontrack Music subsequently appealed to the Court of Justice of the European Union (CJEU) claiming:

• As first part of the first ground of appeal: that the General Court had erred in finding that the word mark ‘EZMIX’ is descriptive. In particular, it argued that EZMIX does not directly and without further reflection – within the relevant circle of people – bring about a connection with the goods and services covered by the application. Thus, a trade mark that has a suggestive character should also have a lower degree of association between the trade mark and the goods and/or services concerned. In this regard, the word mark ‘EZMIX’ does not provide any direct information on how the goods and services concerned would be used. Mixing sound is not a simple process, nor does it inform the relevant circle of people about the various steps involved in the relevant process.

• As the second part of the first ground of appeal: that the General Court had wrongfully found that the company had not disputed the fact that the letters ‘ez’ – carrying the same meaning as the word ‘easy’ – were found all over the internet and often used in everyday English in the course of trade.

• As second ground of appeal: that the General Court and the EUIPO had erred in finding that the phrase used for the designated goods and services – “for easily mixing music” – is a major sales pitch for materials and software used for recording and mixing music.

• As third ground of appeal: that the General Court had infringed Articles 65 and 67 EUTMR by failing to provide Toontrack Music with an opportunity to comment on the said phrase being regarded as a major sales pitch, to reject further evidence submitted, as well as by rejecting the application in its entirety.

The EUIPO disputed all parts of the appeal.

The CJEU order

(i) The first part of the first ground of appeal

The CJEU first set out that, according to Article 256(1) in the Consolidated version of The Treaty on the Functioning of the European Union (TFEU) and Article 58 in the Consolidated version of The Statute of the Court of Justice of the European Union, only decisions on point of law may be subject to a right of appeal. The General Court therefore enjoyed discretion in examining and assessing the relevant facts and evidence. Importantly, the assessment of the facts and the evidence does not – except in cases of misrepresentation by the General Court – constitute a point of law examined by the CJEU in an appeal.

The Court went on to state that it is sufficient that one of the absolute grounds for refusal laid down in Article 7(1) EUTMR is applicable in the case at hand in order for a sign not to be regarded as registrable as an EU trade mark. It then recalled that findings concerning the special features, attention, opinion and attitude of the public concerned, are all relevant in the assessment of the public’s understanding of a mark. The same criteria is applicable to word marks as well (C ‑ 232/15 P, ultra air (available only in French and German)).

According to the CJEU, Toontrack Music sought – by way of its arguments – to challenge the General Court's assessment of the facts regarding the public’s understanding and therefore obtain a new assessment on the facts. However, Toontrack Music did not claim that the General Court ought to have misunderstood the facts or evidence submitted to it at the time. It was therefore clear that the company’s arguments should be left out of consideration. Thus, the first part of the first ground of appeal was found to be manifestly inadmissible.

(ii) The second part of the first ground of appeal

The General Court found that the EUIPO Fifth Board of Appeal had not erred in concluding that the public would immediately understand that ‘ez’ is synonymous with the word ‘easy’. The CJEU confirmed that.

iii) The second ground of appeal

As regards the second ground of appeal, the CJEU reasoned that it was made clear through the previous assessments of the word mark that the evidence submitted by Toontrack Music was sufficiently reviewed. In particular, the evidence relating to the relevant circle of people and how the word mark would be perceived by such circle of people was regarded as being sufficient.

Importantly however, it is for the appellant to state precisely the evidence misunderstood by the General Court and to demonstrate the errors of assessment that led to the General Court's misconception, in order to enable the CJEU to examine the argument relating to the scope of circle of people (C ‑ 101/17 P, Verus (available on in French and German)). In its appeal, Toontrack Music did not state what evidence had been allegedly misunderstood and the second ground was therefore dismissed.

iv) The third ground of appeal

The CJEU finally dismissed the third ground of appeal due to the ‘principle of court hierarchy’ which prevents the parties to add new case material in the higher instances (C ‑ 101/17 P, Verus).

What now?

For the moment it appears that the CJEU is highly aware of the usage of abbreviations such as “ez”, despite it (mostly) being used in tech-savvy communities. Nonetheless, the CJEU wasted no time considering procedural obstacles which play an important role in safeguarding procedural economy and efficacy. When it comes to cases like this, the CJEU has once again made it clear that only decisions on point of law may be subject to appeal to this court.