No trade mark for Rubik's cube shape, says the CJEU

Following a ten year battle, the Court of Justice of the European Union has ruled that a three dimensional shape mark for the Rubik’s cube is invalid, on the basis that the mark consists exclusively of the shape of goods which is necessary to obtain a technical result. The stance taken by the CJEU shows that it is necessary to look beyond the representation of a shape mark to the product that is being protected, to see if in reality the mark is being used to protect a technical result.

Background

The world famous Rubik’s cube has been on the market for around 40 years. A shape mark for the cube was registered in 1999 as a Community trade mark (now an EU trade mark) for ‘three dimensional puzzles’. The mark as represented in the registration consisted of a cube and a grid structure on each surface of the cube depicted in black and white.

In 2006, Simba Toys filed an application for a declaration of invalidity against the European Union Trade Mark (EUTM) relying on a number of grounds. In particular, it relied on Article 7(1)(e)(ii) of the Community Trade Mark Regulation, as it was then known, which provides that signs are not to be registered if they consist exclusively of the shape of goods which is necessary to obtain a technical result.

The EUIPO Cancellation Division originally rejected Simba’s application for a declaration of invalidity. This decision was confirmed by the Board of Appeal and the General Court. The General Court took the view that it would not be possible to infer the existence of the internal rotating mechanism of the Rubik’s cube based on the mark as it was graphically represented and therefore it was not possible to take this mechanism into account and the mark did not fall foul of Article 7(1)(e)(ii).

The CJEU decision

The CJEU stated that the General Court’s interpretation was too narrow, and that it should have (i) assessed the essential characteristics of the shape mark in light of the technical function of the actual goods concerned, i.e. three dimensional puzzles claim, and (ii) that in making that assessment it should have taken into account relevant material in addition to the graphic representations and descriptions filed.  In other words, the known rotating mechanism of the Rubik’s cube should have been taken into account.

Further, the CJEU said that even though the mark had been registered for ‘three-dimensional puzzles’ without being restricted to those having 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 assess the functionality.

The CJEU also mentioned that the refusal to register a mark based on Article 7(1) must be interpreted in light of the underlying public interest to prevent trade mark law from granting a monopoly on technical solutions or functional characteristics of a product.

Implications

The public policy reasons are clear: if the shape of the goods is necessary to obtain a technical result, the shape may not be protected as a trade mark. The CJEU has made it clear that rights holders cannot hide behind the abstract nature of a graphic representation to argue that the mark itself does not consist exclusively of the shape of goods which is necessary to obtain a technical result.

This decision may present difficulties for owners of shape marks. However there are alternatives ways to protect these valuable products:

• By registering trade marks which include aspects of the products shape which are not dictated by their technical function, or which include logos, colour or other elements whose inclusion could avoid an objection under the various shape exclusions.
• If a product’s functionality is to be protected then patent protection can be considered. To obtain patent protection the product must fulfil the requirements of patentability such as novelty, involving an inventive step and sufficiency. Unlike trade mark rights, the term of patent protection is limited.
• Registered design protection could also be sought, unless the features of the product are considered to be solely dictated by the product’s technical function (which the Rubik’s cube would probably be caught under) or other exclusions apply.

‘The Rubik’s cube is currently protected by a range of other trade marks including three-dimensional shape marks in colour for toys and three-dimensional puzzles, several three-dimensional shape marks for  goods and services such as licensing and advertising services, word marks and logo marks which it can rely on against infringers. Although the shape mark registrations in colour for toys and three-dimensional puzzles are pending cancellation actions, it is arguable that the presence of colour on those marks would be interpreted to mean that the sign does not consist exclusively of the shape of goods which is necessary to obtain a technical result, and could therefore overcome a challenge based on Article 7 (1)(e)(ii).

It is worth noting however that the revised EU Trade Mark Regulation (EU 2015/242), which has been in force from March 2016, has broadened the shape exclusions to include “other characteristics”, so signs which consist exclusively of the shape or another characteristic which is necessary to obtain a technical result are now also precluded from registration. It is left to be seen how courts will interpret “other characteristics” and whether the presence of the colour elements on the Rubik’s cube shape marks for instance could be interpreted to being “necessary to obtain a technical result”.