The CJEU has recently set aside a judgment of the General Court which had confirmed trade mark protection for the Rubik’s Cube. It will now for the EUIPO to reconsider whether the three-dimensional trade mark in the shape of the Rubik’s Cube is eligible for protection. Thus, a legal conflict that has kept trade mark practitioners on their toes for some time continues to the next round.

What happened so far? In the 1990s, Seven Towns, a UK-based company, successfully registered a three-dimensional EU trade mark in respect of “three-dimensional puzzles” for the above representation of the Rubik’s Cube:

Back in 2006, Simba Toys filed a cancellation request against this registration. The German toy manufacturer argued that the trade mark should not have been registered as it had a technical function within the meaning of Art. 7(1)(e)(ii) EUTMR. According to this provision, signs are barred from registration if they consist exclusively of the shape of goods which is necessary to obtain a technical result. Neither the EUIPO nor the General Court found that these requirements were met in the present case.

In the judgment under appeal, the General Court held that the essential characteristics of the three-dimensional trade mark (the shape of the cube and its grid structure) did not suggest a technical function. In its view, the widely known rotating capability of the cube’s individual elements should not be read into the trade mark. The General Court reasoned that only the graphic representation of the trade mark as registered had to be considered, which did not imply any technical function.

The CJEU, however, has now rejected this approach. The General Court’s reasoning contravened the public interest underlying Art. 7(1)(e)(ii) EUTMR, namely to prevent an undertaking from being granted a monopoly on technical solutions or functional characteristics of a product. The CJEU reiterated that the functionality of a trade mark ought to be determined not only on the basis of its graphic representation but also by considering additional information on the actual goods concerned. This task has now been reassigned to the EUIPO.

The CJEU’s position is in line with its earlier decision in Pi-Design (see joined cases C-337/12 P – C 340/12 P). In that decision, the CJEU made it clear that the functionality of a trade mark should be analysed by taking into account the actual goods in relation to which the mark was used. That being said, it seems unlikely that the present ruling will remove all uncertainties surrounding the application of Art. 7(1)(e)(ii) EUTMR on the grounds the Court has arguably missed an opportunity to offer more specific instructions as to how to assess the functionality of a trade mark. Future discussions are likely to focus on determining the permissible type of sources and information regarding the function of the actual goods at issue.

Case C 30/15 P