Author: Inga Lukauskiene, Associated Partner, Attorney-at-law, Patent Attorney at METIDA, Court
There are probably few of us who know that Rubik’s Cube, a game that is famous and popular all over the world, was born in Hungary, and that this game is older than many of us: this mechanical puzzle was invented in 1974 by Erno Rubik, a Hungarian sculptor and architect.
Even today, we would be pressed hard to find someone who does not know or has never held this mechanical puzzle in their hands because in the early 80’s, Rubik’s Cube had become a symbol of pop culture; as a result, it could be found in every home and was a popular Christmas present.
Over the past few decades, many new and popular puzzles have seen the light of day – besides, daily entertainment has become synonymous with computer and various smart devices, yet Rubik’s Cube still stirs a lively interest on the toys market, and we have the recent legal dispute over the protection of Rubik’s Cube as a three-dimensional trade mark within the European Union to prove it.
Rubik’s cube as a three-dimensional trade mark was protected in the European Union under the name of Seven Towns on the basis of an application lodged in 1996. The dispute over the trade mark’s registration broke out back in 2006, with Simba Toys filing a request to invalidate the registration of the trade mark, and went on for a massive 10 years. Even though the court decision does not specify the real reasons behind the dispute, the registration of a trade mark usually gets contested only when the competitor also wants to use the same or a similar trade mark.
The original decision by the Cancelation division of the European Union Intellectual Property Office (EUIPO) favoured the popular toy, and so did the decision of the EU General Court: the application to invalidate the trade mark registration from Simba Toys GmbH & Co. KG was dismissed. Yet the Court of Justice of the EU turned the situation around by ruling, on 10 November 2016, in case No C-30/15P that this three-dimensional trade mark is nonetheless only a shape of goods which is necessary to obtain a technical result and this trade mark therefore does not satisfy the applicable requirements.
There was no dispute in the case that the key properties of the subject trade mark were the cube-shape and the grid structure of the wall surfaces. However, both the parties to the case, and the court varied in their opinion whether the black lines visible in the trade mark and the grid structure of the surfaces of the cube at issue in general perform any technical function.
The EU General Court ruled that the rotating capability of the individual elements of the cube at issue, which are reflected by those black lines, was essentially based on knowledge of the rotating capability of the vertical and horizontal lattices of the Rubik’s Cube and that that capability cannot result from the characteristics of the shape presented but, at most, from an invisible mechanism internal to that cube. Furthermore, the General Court took the view that the grid structure on each surface of the cube at issue did not perform any technical function since the fact that that structure had the effect of dividing visually each surface of that cube into nine equal square elements could not constitute a technical function for the purposes of the relevant case-law.
Still, the Advocate General who offered his opinion in this case pointed that since it was not disputed that the sign at issue consisted of the shape of actual goods and not of an abstract shape, the General Court should have defined the technical function of the actual goods at issue, namely a three-dimensional puzzle, and it should have taken this into account when assessing the functionality of the essential characteristics of that sign.
As a result, the CJEU ruled that that the General Court had interpreted the criteria for assessing Article 7(1)(e)(ii) of Regulation No 40/94 too narrowly, in that it took the view 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. Which is to say that even when the technical functionality of certain characteristics is invisible yet known considering the goods for which the trade mark is registered, this can also be used as a reason to decide that the mark is nonetheless but a shape defined by the technical characteristics of the goods. In this case, the shape of the cube carrying black lines dividing every surface of the cube into 9 sections was recognised indicative of the rotating capability of the cube along those lines in various directions, which in fact is a technical function.
This judgement must have come as a surprise both to the company Seven Towns and everyone concerned with the protection of intellectual property, all the more as previous practice had been somewhat different: for instance, LEGO Juris A/S had managed to defend its right to the protection of the block as a three-dimensional trade mark, and the judgement in that case was considered a textbook example for the purposes of defence in similar disputes.
And so the Rubik case will give us a push to reconsider the protection of three-dimensional trade marks and to look for new methods of protection because, regardless of the judgement by the Court of Justice of the EU, no one will probably be bold enough to deny that Rubik’s Cube is an original, unique, and still-popular toy that deserves protection for all the objective reasons.