Question Solved - CJEU Rejected Rubik's Cube TM due to Technical Functionality

Trademarks are a very flexible tool to protect a variety of interests in goods, be it looks or the design of an object. One thing it cannot, and should not protect is technical functionality, which is better suited for protection through patents. Many have tried to use trademarks as quasi-patents that last forever, but the courts are quite reluctant to allow such registrations one challenged (if even registered in the first place). One such trademark has been the subject of a 10 year legal battle, namely the Rubik's Cube. The saga has finally come to its (current) conclusion, with a long-awaited decision handed down by the CJEU in late 2016.

The case of Simba Toys GmbH & Co. KG v EUIPO dealt with a registered trademark for the design of the Rubik's Cube (No. 162784), which is owned by Seven Towns Ltd. The mark consists of a 3D rendition of the Cube, showcasing the grid pattern on all sides of the Cube. Simba Toys challenged the mark in 2006, and ultimately alleged an infringement of Article 7(1)(a) to (c) and (e) of the old Community Trade Mark Regulation (No 40/94), which set out the absolute grounds of refusal for trademark applications.

While Simba Toys put forth six arguments, the CJEU focussed only on the first, which alleged a misapplication of Article 7(1)(e)(ii) of the Regulation (which prevents the registration of a shape of goods which is necessary to obtain a technical result), under which the General Court deemed that the essential characteristics of that shape do not perform a technical function of the goods at issue.

The CJEU first had to identify what the essential characteristics of the mark are, and the Court followed the General Court's rationale, setting them out as "...a cube and a grid structure on each surface of the cube". The essential characteristics then have to be assessed in the light of the technical function of the actual goods concerned, i.e. a three-dimensional puzzle. This has to be done using the representation given in the application, namely the drawing of the Cube, along with any descriptions of the same.

Solving a Rubik's Cube can be just as challenging as protecting it

The Court deemed that the General Court had erred in their assessment of the criteria in relation to the Cube 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 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’ 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". While these 'hidden circumstances' that are not fathomed precisely by an objective observer (i.e. the rotation is not, at least arguably, evident from the drawing of the Cube), this "...cannot preclude account from being taken of the technical function of the actual goods represented by the sign at issue for the purpose of examining the functionality of the essential characteristics of that sign, as the proprietor of that mark would otherwise be allowed to broaden the scope of the protection arising from the registration thereof to cover every type of puzzle with a similar shape, namely any three-dimensional puzzle with cube-shaped elements, regardless of the principles by which it functions".

What the CJEU therefore was concerned about was that these 'hidden' features could be used almost without limit to prohibit others from using the technical functionality of, for example, rotation for 3D puzzles, simply based on the look of the puzzle itself. This makes sense, as one can appreciate that the broadening of trademarks beyond their typical protection would mean a near monopoly on some features that are not immediately apparent based on a graphical representation. The CJEU therefore rejected the appeal, and didn't refer the matter back to the General Court.

The case sets a very important precedent, and rightsholders need to be more careful in their applications for trademarks, especially when they contain, or might contain, technical functionalities. Clearly one can appreciate the defence of legitimate trademarkable features; however, overextending your rights just might lead to the loss of your mark.

Source: IPKat