The Rubik’s Cube, named after its inventor Erno Rubik, was invented in 1974, but it was not until 1999 that a three-dimensional EU trade mark was registered.

That registration was, no doubt, encouraged by the number of shape marks registered following changes in the law. In the UK, for example, shape marks had not been allowed until the Trade Marks Act 1994, when the changes enabled the shape of Coca-Cola bottles, Toblerone bars and Mini motorcars to be registered.

It is important not to underestimate the importance of the trade mark registration to the owners of the Rubik’s Cube IP rights. Unlike other IP rights, trade marks can last forever on completion of the relevant renewal formalities, and so the effect of the registration of a shape mark is to create a monopoly that, for example, a patent (being of limited life) cannot afford. The Rubik’s Cube trade mark represented the only thing between the owners (and the owners’ licensed manufacturers) and competition from mass-produced, and no doubt, cheaper copies.

Unsurprisingly the limitless monopoly afforded by shape marks has proved controversial, and in 2016 that controversy led a German toy manufacturer bringing an invalidity claim in relation to the Rubik’s Cube trade mark, the claim having finally been decided in the European Court of Justice (ECJ) after almost 10 years of litigation.

The principal issue for the ECJ was whether the trade mark consisted exclusively of ‘the shape of goods which is necessary to obtain a technical result’. The General Court and the Board of Appeal took the view that the grid structure on each surface of the cube did not perform any technical function. The ECJ disagreed, saying that the court below should have defined the technical function of the product (a three-dimensional puzzle), and taken this into account when assessing the functionality of the essential characteristics of the sign. It is plain that the ECJ was concerned by the extent of the protection granted by the trade mark registration, which, on the face of it, could extend to every type of puzzle with a similar shape, regardless of technical function.

The ECJ ruled the Rubik’s Cube trade mark invalid. Earlier that year the High Court had decided that the shape of KitKat could not be registered as a shape mark (a decision later affirmed by the Court of Appeal). It is possible that these decisions reflect a growing intention on the part of the courts to look rather more closely at applications to register shape marks, particularly where shape is related to functional characteristics and/or technical result. The monopoly that trade marks afford can, if abused, lead to anti-competitive practices and the courts will be wary of sanctioning the registration of trade marks if the result is to afford a limitless monopoly, particularly where other IP rights with limited protection (such as Patents) are available.

Designers and inventors who design three-dimensional products should carefully consider the IP protection available. Where the design has functional characteristics, and/or where it produces a technical result, then all available IP rights should be considered. In such cases, registering a trade mark alone may well now be the position of last resort.