The Court of Justice of the EU (CJEU) yet again seems to have raised the bar for the trademark protection of 3D shape marks. In its recent Rubik’s Cube judgement, it has annulled EUIPO’s ruling that confirmed EU trademark (EU TM) protection for the Rubik’s Cube shape. Novagraaf’s Frouke Hekker sets out the implications for 3D shape marks moving forward.

Absolute grounds for refusal for the trademark protection of shapes
Grounds for refusal exist in trademark law to prevent companies from acquiring a monopoly over technical solutions or a product’s functional characteristics. European legislation therefore contains absolute grounds for the refusal of shapes and other characteristics. Namely: trademark protection is excluded, if the shape or other characteristic for which protection is sought:

  • results from the nature of the goods;
  • gives substantial value to the goods; or
  • is necessary to obtain a technical result.

Only shapes or other characteristics that are not excluded on these grounds are eligible for trademark protection, but – as with trademarks in general – they must also satisfy criteria for trademark registrability, such as the requirement for a mark to be distinctive in order to fulfil a trademark’s essential function of indicating a product’s origin.

In practice, the distinctiveness requirement is quite a hurdle for shape marks, as the applicant must show that the shape has acquired a distinctive character through use. This requires providing proof that consumers recognise the shape as a distinguishing mark of that particular undertaking. In general, the greater the similarity of the shape to what would be a product’s obvious shape, the less distinctive it will be deemed to be, and the harder it is to prove that it has acquired distinctiveness. In other words, shapes generally need to depart significantly from the product norm or customs of the sector in order to be accepted as a trademark.

The background of the dispute and CJEU ruling
The Rubik’s Cube was registered as a 3D EU TM in 1999. In 2006, German toy manufacturer Simba Toys applied to have the mark cancelled. Simba Toys argued that Rubik’s Cube should be excluded from trademark protection because the shape with its rotating capability was necessary to obtain a technical result and, therefore, could only be protected as a patent, not a trademark. EUIPO dismissed the application and Simba Toys brought an action before the EU’s General Court to seek annulment of EUIPO’s decision.

In November 2014, the General Court dismissed the action brought by Simba Toys, ruling that the black lines or the grid structure which formed part of the shape was not suggestive of any rotating capability, as the rotating capability results from an internal mechanism which is invisible. Therefore, the General Court ruled that the Rubik’s Cube did not fulfil any technical function and could not be refused as a 3D EU trademark.

However, on appeal, the CJEU has now ruled that both EUIPO and the General Court should have taken into account the non-visible functional elements, such as the rotating capability, in their assessment of whether the Rubik’s Cube shape should be excluded from trademark protection because the shape is necessary in order to obtain a technical result.

It is important to point out that, contrary to suggestions in the world’s media, the CJEU’s ruling has not yet led to the annulment of the Rubik’s Cube shape. The CJEU has set aside the judgement of the General Court and annulled EUIPO’s decision. Now EUIPO will have to decide on the annulment taking into account the findings of the CJEU.