cn1COX PaulIt is difficult to envisage a more iconic shape than that of the Rubik's cube. The Rubik's cube has kept users entertained and puzzled for many decades. Unbelievably, to those of us who have tried to solve the Rubik's Cube, the world record is reported as 3.47 seconds, which beat the previous record by 0.75 secs. In contrast, the shape of the Rubik's cube has been subject to an ongoing legal battle which has lasted for more than 13 years and made its way up to the highest court in the EU (nearly twice). Charlene Nelson, Chartered Trade Mark Attorney and Paul Cox, Partner, provides further insight.

Last month, the EU Intellectual Property Office (EUIPO) finally cancelled the EU trade mark for the shape of the famous cube because they found that the shape of the cube is necessary to obtain the intended technical result and consequently it is not capable of qualifying for a registered trade mark.

The policy reason behind this is that the legislator has decided that technical solutions are capable of being protected under other intellectual property rights such as patent protection which is available for 20 years and it would not be in the public interest to grant protection under trade mark law indefinitely to such solutions which need to be free for others to use after patent protection has expired.

In 1996, Seven Towns filed an application to register the 3D sign below as an EU trade mark in class 28 for "three-dimensional puzzles". No colour for the mark was claimed and Seven Towns did not provide a description of the mark. The mark was registered at the EUIPO in 1999.

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The trade mark was subsequently transferred to Rubik's Brand Ltd.

In 2006, Simba Toys GmbH & Co. KG filed an application for a declaration of invalidity of the trade mark on the ground, inter alia, that it involved a technical solution consisting of its rotating capability, which does not comply with the basis for granting a valid trade mark. In particular, they relied on Article 7(1)(e)(ii) EUTMR which provides a ground for refusing to grant a trade mark. It reads:

"The following shall not be registered.....signs which consist exclusively of...the shape, or another characteristic of goods which is necessary to obtain a technical result."

The application was rejected and Simba Toys subsequently unsuccessfully appealed to the Board of Appeal. In 2014, the General Court (GC) dismissed a further appeal on the basis that the cube shape did not involve a technical function such as to preclude it from being protected as a trade mark. The GC took the view that the technical solution characterising the Rubik's Cube did not result from the characteristics of that shape but from an invisible mechanism internal to the cube. So, this was all positive from the perspective of Rubik's Brand as the trade mark was valid.

Simba Toys appealed against the GC's judgment yet again and this time before the highest court in the EU, the Court of Justice of the EU (CJEU). In 2016 the CJEU set aside the judgment of the GC and upheld Simba's Toys ground of appeal that the GC had interpreted the legislation too narrowly. The CJEU held that the EUIPO and the GC should have taken into consideration the non-visible functional elements of the product represented by that shape as well as the sign's representation.

Therefore, the matter returned to the EUIPO and in 2017 the Board of Appeal invalidated the registration in its entirety and the trade mark was cancelled. This decision was appealed to the GC but failed.

Before the GC, Rubik's Brand argued that the Board of Appeal had incorrectly stated that a reasonably discerning observer would perceive that one face of the cube shows little squares pictured in white and the rest of the faces are differently hatched in order to suggest different colours. In addition, in only considering the graphic representation of the sign, the Board of Appeal had erred in finding that the differences in the colours on the six faces of the cube constituted an essential characteristic of the contested mark.

The GC agreed with the latter, finding that the Board of Appeal had clearly intended to state that the six faces of the cube were covered by six different colours which could not be inferred from the representation of the sign alone, which did not include any description of the mark.

In relation to the analysis of the functionality of the essential characteristics of the mark, the GC considered that the essential characteristic of the black lines which intersect horizontally and vertically on each of the faces of the cube, dividing each of them into nine small cubes, is necessary to obtain the intended technical results. Those lines represent a physical separation between the different small cubes which allow a player to rotate each row of small cubes independently of each other on the cube's six faces. This physical separation is necessary to rotate the different rows of small cubes by means of a mechanism located in the centre of the cube. Without this physical separation the cube would be nothing more than a solid block.

The GC confirmed therefore that "given that the two characteristics of the contested mark which have been correctly identified as essential by the Board of Appeal, in the present case the overall cube shape, on the one hand, and the black lines and the little squares on each face of the cube, on the other, are necessary to obtain the intended technical result of the actual goods concerned it must be concluded that that mark falls within the ground referred to in Article 7(1)(e)(ii)." Therefore, the GC upheld the contested decisions and dismissed the appeal brought by Rubik's Brand. The Rubik's Cube trade mark was therefore held to be invalid and will be removed from the register.

Is this the end of the story or will the puzzle go on? Let's hope not!

For more information contact Charlene Nelson on charlene.nelson@footanstey.com / +44 1392 685332 or Paul Cox on paul.cox@footanstey.com / +44 2380 172212



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