The CJEU overrules the trademark protection for the Rubik’s Cube’s shape
Nuria Ruiz
When compared to other IP rights, three-dimensional trademarks appear as an attractive choice for enterprises wishing to protect the shape or packaging of their products. Provided that the shape complies with the distinctiveness requirement, the registered trademark owner will be able to prevent his competitors from using packagings or three-dimensional shapes that may lead the consumer to confusion as to the corporate origin of the goods for an unlimited period of time.
However, this type of trademark protection shows an obvious peculiarity, which entails the need to adopt a cautious approach as to its registration. As the Advocate General Szpunar pointed out in his conclusions to the case C-205/13, “Hauck GmbH & Co vs. Stokke”:
“There is no doubt that the issues surrounding the registration of this type of sign are quite specific in nature. This is clear from the fact that the difference between the sign and the object which the sign indicates is blurred in that the object becomes the sign in relation to itself”.
This specificity of 3D-trademarks results in the fact that the lines between this IP right and others are blurred, giving rise to discussions more suited to patent or industrial design topics. Such is the case of the absolute prohibition on registration laid down in Article 7(1)(e) point (ii) of Regulation 207/2009 on the European Union trademark, which addresses the issue of technical functionality in terms of the following: “The following shall not be registered: (…) signs which consist exclusively of the shape of goods which is necessary to obtain a technical result”.
In fact, one of the risks associated with the protection of shapes as trademarks is granting the owner a monopoly upon certain characteristics of the product having a technical function, overcoming by these means the time-limit established by the legislator for other IP rights. This consideration has led the Courts to rule against 3D-trademark protection in some high-profile cases, such as the matter of the well-known Lego bricks (Judgment of September 14th 2010, C-48/09, “Lego v. OAMI”) and, more recently, Nestlé’s “Kit Kat” bars, which protection as a 3D trademark was denied last January 20th in the United Kingdom.
On November 10th 2016, and after 10 years of legal battles, the time came for the famous “Rubik’s cube”, in Judgment of November 10th 2016, C-30/15, “Simba Toys v. EUIPO”. In 1999, the British company Seven Towns registered the three-dimensional shape of the cube as a European Union trademark, in relation to “three-dimensional puzzles”, with the following graphic representation:
In 2006, and five days after the trademark renewal, the German company Simba Toys filed an application for a declaration of invalidity, on the grounds of (among others) article 7(1)(e) point (ii) of Regulation 207/2009.
This application of Simba Toys was rejected by both the Cancelation Division and the Board of Appeals of the European Union Intellectual Property Office. Finally, the General Court dismissed the appeal, confirming the validity of the registration.
In general terms, when analyzing whether the essential characteristics of the sign perform the technical function of the goods at issue, the General Court reaffirmed the position of the Board of Appeals, who had approached this issue only on the objective basis of the graphic representation of the trademark. In that sense, it was upheld that the essential elements, namely the cube shape and the grid structure of each of the cube’s faces, gave no indication as to its function, or even whether it had any function.
Be that as it may, the fact is that the rotating capability of the Rubik’s Cube, as a result of its abovementioned grid structure is widely known. Taking this knowledge into consideration, it would be possible to conclude, as alleged by the appellant, that the represented grid structure contributes to the development of a technical function, even if this rotating capability is articulated through an internal, and thus invisible mechanism.
Following the Opinion of the Advocate General Szpunar in this matter, the Court of Justice concludes in point 51 of its ruling:
“ It follows that the General Court interpreted the criteria for assessing Article 7(1)(3)(ii) of Regulation No 40/94 too narrowly, in that it took the view, inter alia in paragraphs 57 to 59 of the judgment under appeal, that for the purpose of examining the functionality of the essential characteristics of the sign concerned, in particular the grid structure on each surface of the cube, the shape at issue, as represented graphically, should have been takin 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 on the basis of the graphic representations of the contested mark, such as the rotating capability of individual elements in a three-dimensional “Rubik’s Cube”-type puzzle.”
In short, in evaluating the functionality of the essential characteristics of the sign, it is necessary to consider not only the graphic representation of the trademark, but also “additional information”, even in the case that the said information implies the assessment of invisible elements.
With this reasoning, the CJEU withdraws the protection as a 3D trademark of the Rubik’s Cube, and hereby confirms the restrictive jurisprudential trend as to these non-conventional rights, in line with those authors who consider that the protection of shapes should be restricted to patent law, or more generally, industrial design law.
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