By decision issued on November 24, 2014, the EU Court has ruled that the registration as a trademark of the shape of the world wide known puzzle invented in 1974 by Professor Erno Rubik is to be considered valid.
Back in 1999 the British company Seven Towns, which manages the IP rights related to Rubik’s cube, had registered as a 3D trademark the shape of the cube for “3d puzzles”, hereby reproduced:
Click here to view image.
In 2006, the German toy manufacturer Simba Toys, applied to the OHIM to have the three-dimensional mark cancelled, claiming that its rotating capability should have been filed as a patent rather than a trademark. OHIM dismissed Simba Toy’s cancellation request. Therefore, Simba Toys brought a final action before the EGC against the decision of OHIM.
The EGC also ruled against the appeal brought by the German company.
Indeed, the Court pointed out that the crucial characteristics of the contested trademark are, namely, the cube per se and the grid structure which appears on each of its surfaces.
Moreover, the rotating capability of the vertical and horizontal frames of the Rubik’s Cube do not result from the black lines or the grid structure. Its capability is the result of an internal mechanism which is invisible on its graphic representations. Therefore, the registration of the shape of the Rubik’s Cube as a Community Trademark cannot be rejected because the shape does not include any technical function.
The Court determined that the trademark does not allow its holder to prohibit others from selling different types of three-dimensional puzzles that have a rotating capability. Instead, of the marketing monopoly is limited to three- dimensional puzzles that have the shape of a cube with surfaces which bear a grid structure (as seen above).
Finally, the Court came to the result that the cubic grid structure of the trademark differs from the structure of other three-dimensional puzzles on the market. Therefore, the structure has a distinctive character which enables consumers to see the structure as an indication of the origin of the product.