ECJ: Rubik’s Cube cannot be protected as a 3D mark

What is it all about?

At the request of Seven Towns, a British company which, inter alia, manages the intellectual property rights in the ‘Rubik’s cube’, the European Union Intellectual Property Office (EUIPO) in 1999 carried the following cube form as a three-dimensional EU mark for ‘ three-dimensional puzzles”:

In 2006, Simba Toys, a German toy manufacturer, applied to the EUIPO for a declaration of invalidity of this three-dimensional mark
on the grounds, inter alia, that it contained a technical solution consisting in its rotatability and that such a solution could only be protected by a patent and not as a trademark.

EUIPO rejected the application and Simba Toys brought an action before the General Court of the European Union seeking annulment of the EUIPO decision.

First instance

In its judgment of November 25, 2014, the court dismissed Simba Toys’ action on the grounds
that the cube shape in question did not contain a technical solution that would prevent this shape from being protected as a trademark. In particular, the Court took the view that the technical solution characteristic of the Rubik’s Cube did not arise from the characteristics of that shape, but at most from an invisible mechanism in the interior of the cube.

Simba toys appealed against the judgment of the General Court to the Court of Justice. By judgment of 10 November 2016, the Court of First Instance annulled both the judgment of the General Court and the decision of EUIPO. In its judgment, the Court held, inter alia, that EUIPO and the General Court, in order to determine whether registration should have been refused because the type of cube at issue contained a technical solution, also included invisible functional elements of the functional elements of the form represented goods, such as their rotability.

And back again

In response to the Court’s ruling, EUIPO had to adopt a new decision which takes account of the Findings of the Court of Justice. By decision of 19 June 2017, EUIPO found that the representation of the shape of the cube at issue had three essential features, namely the shape of the cube as a whole, the black lines and small squares on each side of the cube and the different Colors on the six sides of the cube. Each of those essential features is necessary to achieve a technical effect which arises from the fact that rows of smaller cubes of different colours, forming a larger cube, are rotated vertically and horizontally around an axis until: the nine squares of each side of this cube would have the same color. Since the EU trade mark regulation does not allow the registration of a form the essential characteristics of which are necessary for the attainment of a technical effect, EUIPO found that the mark at issue had been registered in breach of that regulation, and therefore deleted their registration.

Rubik’s Brand Ltd, which currently owns the trade mark at issue, challenged this EUIPO decision before the ECJ.

What does the ECJ say again?

In its judgment, the ECJ considers, first of all, that the EUIPO decision is vitiated by an error of assessment in so far as EUIPO has found that the different colours on the six sides of the cube are an essential feature of the mark at issue. Be. First, Rubik’s Brand has never claimed that the possible colouring of each side of the cube plays an important role for it in connection with the registration of the mark at issue, and, on the other hand, a mere visual analysis of the graphic Representation of this mark does not clearly recognize that the six sides of the cube have different colors.

The General Court also upholds the definition of technical effect contained in the contested decision. In that context, the General Court finds that the type of cube at issue represents the appearance of the specific product for which registration was sought, namely the three-dimensional jigsaw puzzle known as ‘Rubik’s cube’. This commodity is a game whose goal is to restore a colored three-dimensional puzzle in the form of a cube of six sides of different color. This goal is achieved by turning rows of smaller cubes of different colors, which are part of a larger cube, vertically and horizontally around an axis until the nine squares of each side of that cube have the same color.

As regards the assessment of the functionality of the essential features of the mark at issue, the General Court, like EUIPO, considers that the essential feature, which consists in the black lines which intersect horizontally and vertically on each side of the cube and each of these sides is thus divided into nine small cubes of the same size, arranged in three rows of three each, is necessary to achieve the desired technical effect.

These black lines represent a physical separation between the various small cubes, which allow the player to rotate each row of small dice independently of each other, in order to place these small cubes in the desired color combination on the six pages of the cube. Such a physical separation is necessary in order to be able to rotate the different rows of small cubes vertically and horizontally using a mechanism inside the cube. Without such a physical separation, the cube would be nothing more than a fixed block that would not contain a single element that could be moved independently.

As regards the essential characteristic of the shape of the cube as a whole, the General Court shares EUIPO’s
view that the shape of the cube is inseparable from, first, the grid structure, consisting of black lines crossing on each side of the cube and dividing each of those sides into nine small cubes of the same size, arranged in three rows of three, and, second, the function of the specific product, which consists in the fact that the rows of small cubes can be rotated horizontally and vertically. In the light of those elements, the shape of the product may be only that of a cube, that is to say, a regular hexahedron.

In conclusion, therefore,

Therefore, the General Court concludes that, although the different colours on the six sides of the cube do not constitute an essential feature of the mark at issue, the two features of that mark, which EUIPO rightly classifies as essential, are in order to achieve the with the effect sought by the product represented by the type of cube in question, and that form should therefore not have been registered as an EU trade mark. Consequently, the General Court upholds the contested decision and dismisses the action brought by Rubik’s Brand.

Author: Marian Härtel

Marian Härtel ist Rechtsanwalt und Fachanwalt für IT-Recht mit einer über 25-jährigen Erfahrung als Unternehmer und Berater in den Bereichen Games, E-Sport, Blockchain, SaaS und Künstliche Intelligenz. Seine Beratungsschwerpunkte umfassen neben dem IT-Recht insbesondere das Urheberrecht, Medienrecht sowie Wettbewerbsrecht. Er betreut schwerpunktmäßig Start-ups, Agenturen und Influencer, die er in strategischen Fragen, komplexen Vertragsangelegenheiten sowie bei Investitionsprojekten begleitet. Dabei zeichnet sich seine Beratung durch einen interdisziplinären Ansatz aus, der juristische Expertise und langjährige unternehmerische Erfahrung miteinander verbindet. Ziel seiner Tätigkeit ist stets, Mandanten praxisorientierte Lösungen anzubieten und rechtlich fundierte Unterstützung bei der Umsetzung innovativer Geschäftsmodelle zu gewährleisten.