The Court of Justice of the European Union (CJEU) has ruled in favour of Simba Toys in a long running dispute about whether the shape of the Rubik's Cube can be a registered trade mark in the EU.
Back in 2014, we reported that the General Court had dismissed an action brought by Simba Toys for the annulment of the decision of the Board of Appeal of the EUIPO (as it is now). The EUIPO had rejected a claim from Simba Toys, that the Rubik’s Cube 3D shape trade mark, which was registered in 1999, was “incapable of distinguishing the goods of one undertaking from another undertaking; was devoid of distinctive character; was descriptive and consisted of a shape which was necessary to obtain its technical function”.
The General Court had found that the mark had been adequately represented and there was no reason why the mark was not capable of distinguishing the goods and services of one undertaking from those of another. Further, it stated that the “cubic grid structure gave no indication as to its function”.
Simba Toys appealed this decision to the highest court in Europe. In May 2016, the CJEU invited the Advocate General (AG) to give an opinion on the matter, and following the Lego decision, the AG suggested that the CJEU should find that the shape of the Rubik’s Cube is dictated by technical function.
The CJEU found that the General Court had interpreted the criteria for assessing whether a sign, that consists exclusively of the shape of the goods, is necessary to obtain a technical result (Article 7(1)(e)(ii)) too narrowly. Specifically, in examining the functionality of the essential characteristics of the sign, in particular the grid structure on the surface of the cube, the shape at issue should have been taken as a basis, without necessarily having to take into consideration any additional circumstances which an objective observer would not have been able to “fathom precisely” by looking at the pictures of the mark, such as the rotating capability of a Rubik’s Cube-type puzzle.
The fact that the mark at issue was registered for “three-dimensional puzzles” without being restricted to puzzles having a rotating capability, and that Seven Town did not include a description specifying that the mark had such rotating capability, should not have stopped consideration being taken of the technical function of the actual goods represented by the mark, for the purpose of examining the functionality of the essential characteristics of that sign. If it had, the proprietor of the mark would be allowed to broaden the scope of protection to cover every type of puzzle with a similar shape (any 3D puzzle with cube-shaped elements, regardless of its functions).
To uphold a registration which is contrary to Article 7(1)(e)(ii) would have given the proprietor very wide protection and effectively a monopoly on technical solutions or functional characteristics of a product. Such a monopoly should be restricted to patents, rather than trade marks. In light of this, the CJEU decided that the EU Trade Mark registration for the shape of the Rubik's Cube should be cancelled.