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Rubik's Cube loses shape trade mark protection

Rubik's Cube has lost a key trade mark battle before the European Court of Justice (ECJ). The ECJ has ruled that the registered EU trade mark protecting the 3D shape of the Rubik's Cube is invalid because it consists of a shape necessary to achieve a technical result. 

This could have implications for existing and potential trade mark registrations for 3D shapes.

The decision is the latest in a series of high-profile failures to secure trade mark protection for unusual and distinctive shapes.  Following a High Court ruling in January last year, Nestlé was unable to trade mark its four-finger KitKat chocolate bar in the UK.

Background

In 1999, the shape of the iconic, multi-coloured, three dimensional Rubik's Cube puzzle was registered as a 3D EU trade mark with the European Union Intellectual Property Office (EUIPO).

In 2006, Simba Toys (Simba) filed an unsuccessful declaration of invalidity on the basis that the cube's rotating capability should be protected by a patent and not a trade mark.  Unlike patents, trade marks can potentially offer an indefinite period of protection to inventors against competitors making commercial use of their inventions.

A subsequent appeal by Simba to an EUIPO board of appeal was unsuccessful as was a further appeal to the EU General Court. Simba then appealed to the ECJ who decided to set aside the judgment of the EU General Court and to rule the trade mark invalid.  The ECJ ruled that the EU General Court had failed to properly consider the function of the product when assessing the functionality of the essential characteristics of the trade mark.

The ECJ's decision is final and cannot be appealed. 

Decision

The Rubik's Cube shape was held not to be eligible for trade mark protection as the shape performed a ‘technical function’. Whilst EU trade mark law recognises that shapes can qualify for trade mark protection, it prohibits registration of shape marks where the shape's essential characteristics are determined by a technical function. 

The ECJ held that both the EUIPO and EU General Court had failed to take into account the Rubik Cube's rotating capability when reaching their decisions.  Whilst this aspect of the product could not be seen from the trade mark itself, being derived from an invisible internal mechanism within the cube, it was nevertheless a feature of its shape and made up part of its essential characteristics. 

The ECJ said that to analyse the functionality of a sign, the essential characteristics of a shape must be assessed in light of the product's actual technical function. It was undisputed that the essential characteristics of the sign were a cube and a grid structure on each surface of the cube.

Since the sign consisted of the shape of the actual Rubik's Cube product, the EU General Court should have defined the technical function of the product i.e. a three-dimensional puzzle.  This should then have been taken into account when assessing the functionality of the essential characteristics of the sign and in determining whether or not the shape performed a technical function.

It was necessary to consider the shape as represented graphically as well as the additional elements relating to the function of the actual goods.  On this analysis, the trade mark was held to be invalid.

Implications

Businesses will need to bear the ECJ's decision in mind when applying for 3D trade marks and in considering the validity of any existing trade marks.

Those in the toy and games industry will undoubtedly now look to their 3D trade mark registrations to verify how vulnerable they are to a third party challenge due to their underlying functionality.

The decision may also result in invalidity and opposition challenges becoming more complicated as extrinsic evidence of use/invisible features of the registered sign will form part of any analysis of registrability.

For the Rubik's Cube, whose patent protection ran out some years ago, the decision is undoubtedly a serious blow with fears that it will result in cheap copycat puzzle cubes entering the market.

This publication is intended for general guidance and represents our understanding of the relevant law and practice as at January 2017. Specific advice should be sought for specific cases. For more information see our terms & conditions.



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