Some 40 years after its release, the Rubik's Cube remains one of the best-selling toys in the world. However, following a recent decision from the Court of Justice of the European Union (CJEU), it will likely soon be unable to rely upon its EU Trade Mark in the 3D shape of the cube, on the basis that its mark consists exclusively of the shape of goods which is necessary to obtain a technical result. The CJEU's findings (which must now be implemented by the EU Intellectual Property Office) confirm that it remains extremely difficult to overcome the hurdles to register shape marks as trade marks, particularly where the technical result is well-known.
The CJEU's decision reflects the policy objective that trade mark law should not allow a monopoly on technical solutions or functional characteristics of a product – such solutions or characteristics should be protected through other IP rights, such as patents or designs, which provide a more limited period of protection. The decision follows the 2010 decision that Lego's trade mark for its studded brick shape was invalid, as the shape of the brick achieved the technical result of stacking the bricks. However, it can be contrasted with a more recent decision which upheld the validity of Lego's 3D EUTM for its Lego Mini-Figures, where the only technical features identified by the Court were the holes in the feet which allow the figure to interlock with other Lego products (which, the Court said, were not an essential characteristic of the shape).
Seven Town's EUTM
Seven Towns had applied to register the shape of the Rubik's Cube as an EUTM for "three-dimensional puzzles" in class 28 on 1 April 1996, the day the CTM (now EUTM) system came into effect. Ten years later, in 2006, its German competitor, Simba Toys, filed an application of invalidity against the EUTM relying on a number of grounds. In particular, it argued that the mark consisted exclusively of the shape of the goods which is necessary to obtain a technical result (in breach of Article 7(1)(e)(ii) of the Community Trade Mark Regulation, as it was at the relevant time). The EUIPO Cancellation Division rejected the invalidity application in its entirety, and this decision was confirmed by the Board of Appeal and the General Court.
In particular, the General Court rejected Simba's argument that the rotating capabilities of the cube were reflected by the black grid lines indicated on the shape mark. The General Court concluded that this argument relied on knowledge of the internal mechanism, rather than what could be determined from the characteristics of the depicted shape mark.
In its decision, the CJEU said that the General Court's approach was too narrow and that it should have taken into account the technical function of the actual goods at issue, namely three-dimensional puzzles, when assessing the functionality of the essential characteristics of the mark (which had been identified as the cube and grid structure on each surface of the cube). Whilst it was necessary, when examining the functional characteristics, to look at the mark as represented graphically, the analysis could go beyond that to consider circumstances and materials other than the graphic representation and any description filed with the mark, such as the rotating capability of 3D Rubik's Cube type puzzles.
The CJEU went on to say that it did not matter that the mark was registered for three dimensional puzzles in general (i.e. the specification was not restricted to those that have a rotating capability), nor that Seven Towns had not submitted any description with its application specifying that the shape had a rotating capability. It was still necessary to take account of the technical function of the actual goods represented by the sign in order to examine the functionality of the essential characteristics.
The CJEU explained that the General Court's approach would allow the trade mark owner to broaden the scope of protection to cover every type of puzzle with a similar shape, which would be contrary to the objective of the provision, namely to prevent monopolies on technical solutions or functional characteristics of a product.
The obvious concern for the maker of the Rubik's Cube is that this decision will prompt the release of cheaper imitation products on to the market, though it has stressed in its public statements that it owns a number of other valuable IP rights in its product. The decision is concerning for those brand owners who wish to rely on the protection afforded by shape marks, especially where the product protected has a well-known technical function, as it suggests that the various hurdles for obtaining trade mark protection are increasingly difficult to overcome.
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