The General Court of the European Union has dismissed a cancellation action by Simba Toys in respect of the Community trade mark registration for the 3D shape of the Rubik's Cube (Simba Toys GmbH & Co. KG v OHIM T-450/09). The way in which the mark is graphically presented does not involve a technical solution and therefore, it can be validly registered as a shape trade mark.

Business impact

  • Shape trade marks offer a limited monopoly – in this instance, the mark does not allow the trade mark owner to prevent third parties from marketing all types of 3D puzzles with rotating capabilities. The monopoly is strictly limited to 3D puzzles that have the shape of a cube with a grid structure on its surfaces.
  • A mark will be unregisterable if the shape of the goods is 'technically causal of, and sufficient to obtain, the intended technical result'.  However, a Community trade mark cannot be refused on the ground that the shape merely incorporates a technical function. The rotating capability of the Rubik's Cube does not result from the black lines or the grid structure but from an internal mechanism (which is not visible in the graphic representation of the mark).
  • Care should be taken in the way in which shape marks are graphically represented. Shape trade marks are limited to the observable features and do not necessarily include technical functions, unless such a function is the logical consequence of the respective sign. The image of a 3D cube does not necessarily imply a rotating function.  

Background

A Community trade mark ("CTM") for the following sign was registered for 'three-dimensional puzzles' in Class 26 by Seven Towns Ltd in 1999:

Please click on the view original link above to view the image.

In 2006, Simba Toys filed a declaration of invalidity with OHIM, which was rejected by the Cancellation Division in 2008.  A further appeal was lodged by Simba Toys in 2008, in which it alleged breach of Articles 7(1)(a), (b), (c) and (e) of the Regulation 40/94 (as subsequently replaced by CTM Regulation 207/2009).  This appeal was dismissed in 2009 by the Second Board of Appeal of OHIM (the "Contested Decision").  Simba Toys appealed to the General Court seeking annulment of the Contested Decision and argued that OHIM had breached the Regulations on eight separate grounds as set out below:  

  1. Article 76(1) of Regulation 207/2009: The Office shall examine the facts of its own motion, but in proceedings for refusal of registration shall only have regard to the facts, evidence and arguments provided by the parties and the relief sought;
  2. Article 7(1)(e)(i) of Regulation 40/94: An application for a trade mark should be refused if the signs consist exclusively of the shape which results from the nature of the goods themselves;
  3. Article 7(1)(e)(ii) of Regulation 40/94: An application for a trade mark should be refused if the signs consist exclusively of the shape of goods which is necessary to obtain a technical result;
  4. Article 7(1)(e)(iii) of Regulation 40/94: An application for a trade mark should be refused if the signs consist exclusively of the shape which gives substantial value to the goods;
  5. Article 7(1)(b) of Regulation 40/94: An application for a trade mark should be refused if the signs are devoid of any distinctive character;
  6. Article 7(1)(c) of Regulation 40/94: An application for a trade mark should be refused if the trade mark consists exclusively of signs or indications which may serve to designate a characteristic of the goods such as intended purpose, geographical origin etc.;
  7. Article 7(3) of Regulation 40/94: Paragraphs 7(1)(b) to (d) of the Regulation should not apply if the trade mark has become distinctive for the goods concerned in consequence of the use that has been made of it; and
  8. Article 75 of Regulation 207/2009: OHIM should state the reasons on which it has based its decisions.

The decision

The General Court dismissed Simba Toys' action in its entirety, holding that all eight pleas were unfounded. The CTM in question for the Rubik's Cube had been validly registered. 

1. Article 76(1) of Regulation 207/2009

The General Court found that the Board of Appeal had exhaustively examined the arguments and evidence before it.  In any event, following the 2013 case of Fürstlich Castell’sches Domänenamt v OHIM, there is no requirement for a Board of Appeal to examine facts of its own motion in invalidity proceedings, if it does not consider such an analysis relevant to the proceedings.

2. Article 7(1)(e)(i) of Regulation 40/94

The General Court dismissed Simba Toys' claim that the Board of Appeal failed to take into account that the individual features of the mark were dictated by the 'function' of the product. It was clear that 3D puzzles can assume a multitude of shapes and it was in no way required for 3D puzzles to have the shape of a cube with surfaces bearing a grid structure.

3. Infringement of Article 7(1)(e)(ii) of Regulation 40/94

The General Court considered the 2008 and 2010 decisions in the Lego Juris v OHIM cases in determining the essential characteristics of a sign.  The question is not whether the essential features have a technical function, but whether the shape of the goods is 'technically causal of, and sufficient to obtain, the intended technical result' (Lego Juris v OHIM 2008). As the cube per se and the grid structure of the cube constitute the Rubik's Cube essential elements, there is no causal link between the shape and the rotating capability. The General Court distinguished the 2002 Philips case, in which the shape claimed clearly indicated the technical function of shaving.

4. Article 7(1)(e)(iii) of Regulation 40/94

As Simba Toys' claim related to functional features of the Rubik's Cube and not to substantial value flowing from the 'aesthetic aspect' of its shape, the General Court held that this claim had not been validly established and that Article 7(1)(e)(iii) does not apply.

5. Article 7(1)(b) of Regulation No 40/94

In order to establish the distinctive character within the meaning of Article 7(1)(b), it must serve as identifying the product in question as originating from a particular company. The General Court affirmed that there is a presumption of validity for registered CTMs and that it is for the applicant to provide evidence to the contrary. The General Court held that the mere fact that there is a puzzle available on the market which resembles the Rubik's Cube was not sufficient to indicate a lack of distinctive character. The Rubik's Cube has distinctive character which enables consumers to identify the producer of the goods.

6. Article 7(1)(c) of Regulation 40/94

There is no real link between the Rubik's Cube and 3D puzzles in general. The relevant public is to be assessed by reference to the average consumer and not to professionals in the field.  For the relevant average consumer, the bold black lines of the Rubik's Cube do not automatically link to the rotating capability of the Rubik's Cube.

7. Article 7(3) of Regulation 40/94

As the Board of Appeal had already established the distinctive character of the Rubik's Cube, it was not necessary to consider whether distinctive character had been acquired through use.

8. The first sentence of Article 75 of Regulation 207/2009

As established by Anheuser-Busch v OHIM in 2009, the Board of Appeal's reasoning can be implicit and it does not need to consider every point. The General Court held that the Board of Appeal's analysis of the distinctive character of the Rublik's Cube constituted sufficient analysis.