The Rubik’s Cube remains protected!

by Axel P Ringelhann

Last week the General Court of the European Union found that the depiction of a sign representing a cube with surfaces having a grid structure (which is commonly known as the Rubik’s Cube) is capable of being registered as a three-dimensional trade mark with respect to three-dimensional puzzles in Class 28 of the Nice Agreement.

The trade mark was originally registered on 6 April 1999, and renewed on 10 November 2006. On 15 November 2006, the applicant, Simba Toys GmbH & Co. filed a request for a declaration of invalidity of the trade mark based on absolute grounds for refusal, namely Article 7(1)(a) to (c) and (e) CTMR.

Both, the Cancellation Division as well as the Boards of Appeal of OHIM rejected the application for a declaration of invalidity in its entirety. The applicant appealed to the General Court.

The applicant claimed that the black lines forming the grid on the cube are the consequence of an alleged rotating capability of individual elements of the cube in question. The GC, however, found that with respect to Article 7(1)(e)(ii) CTMR it is necessary to establish if the essential characteristics of the mark at issue themselves perform the technical function of the goods at issue and have been chosen to perform that function, and not that those characteristics are the result of that function. Furthermore, a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element.

The GC further emphasized that the registration of that mark does not have the effect of protecting a rotating capability which the shape in question allegedly possesses, but solely the shape of a cube the surfaces of which bear a grid structure, which gives it the appearance of a ‘black cage’. That mark cannot in particular prevent third parties from marketing three-dimensional puzzles that have a shape different from that of a cube or that have the shape of a cube but whose surfaces do not consist of a grid structure similar to that on the contested mark or any other similar motif, and prevent those puzzles from incorporating or not incorporating a rotating capability.

As regards the applicant’s claim based on Article 7(1)(e)(i) CTMR (which provides that ‘signs which consist exclusively of […] the shape which results from the nature of the goods themselves […] shall not be registered’) the GC found that it is clear that the nature of the three-dimensional puzzles in no way requires that those goods have the shape of a cube with surfaces that have a grid structure. Three-dimensional puzzles, even those with a rotating capability, appeared in a multitude of different shapes, ranging inter alia from the most common geometric shapes (for example cubes, pyramids, spheres and cones) to those of buildings, monuments, objects or animals.

In another claim, the applicant challenged the contested decision on the ground of Article 7(1)(e)(iii) CTMR. It argued that, since the individual features of the shape at issue are necessary for a three-dimensional puzzle with ‘certain optimised individual characteristics (transformability, [a] certain degree of difficulty [and] ergonomic functions)’, the shape gives substantial value to the goods concerned and their commercial success. The GC stated that the applicant’s line of argument is based on the idea that substantial value is conferred on the goods concerned by certain functional features that the shape in question allegedly possesses. The applicant, however, did not demonstrate, or even claim, that such substantial value flows from the aesthetic aspect of that shape.
Concerning Article 7(1)(b) CTMR, the GC held that is for the applicant for revocation or for a declaration of invalidity to adduce evidence in support of its application for revocation or for a declaration of invalidity. Accordingly, it was for the applicant to produce evidence to show the alleged absence of distinctive character of the contested mark and, in particular, to demonstrate that the contested mark resembles ‘the shape most likely to be taken by the product in question’ for the purposes of the relevant case-law. However, it was unable to demonstrate this. What is more, the applicant has not established to the requisite legal standard that the shape in question constitutes the norm in the sector of three-dimensional puzzles.

Regarding the applicant’s final claim, which was based on Article 7(1)(c) CTMR, the GC found that the relevant public consists not of professionals but of average consumers. Furthermore, there is no essential link between a possible rotating capability or even any other possibility of moving certain elements of the cube in question, and the presence, on the surfaces of that cube, of bold black lines. Therefore the applicant cannot claim that professionals in the sector will immediately infer from the graphic representations of the contested mark that the black lines are a consequence of the rotating capability of the elements of the cube in question.

This case is of particular interest, since it is the first Judgement of the GC (and the CJEU respectively) not the reject a CTM application on the ground of Article 7(1)(e)(ii) CTMR.

The first case at the CJEU regarding Article 7(1)(e)(ii) CTMR was the Philips razor case (C-299/99). According to the Court the technical function concerned was clearly apparent from the graphic representation of the shape in question, which displayed in particular, on the head of the electric razor, three circular heads with rotating blades in the shape of an equilateral triangle.

Also in the famous Red Lego brick case (C-48/09 P) the CJEU rejected the trade mark. The graphic representation of the mark at issue displayed in particular two rows of studs on the upper surface of the toy brick in question. The goods concerned being ‘construction toys’, it could be logically inferred from those studs that they were designed for the assembly of toy bricks and that those toy bricks contained a hollow underside and secondary projections, even though those latter elements were not visible on that representation.

In contrast, in the case at hand (T‑450/09), the cube per se and the grid structure which appears on each surface of that cube do not perform a technical function of the goods concerned. Similarly, the shape of the trade mark does not result of the good itself, nor gives it a substantial value to the goods at hand.

Axel Ringelhann
Assistant Editor