Another judicial episode concerning the shape of the famous Rubik’s cube: by its recent decision of October 24, 2019 in Case T-601/17, the General Court confirmed that the shape of the Rubik’s Cube cannot be registered as a three dimensional trademark because its essential features are necessary “to obtain the technical result to rotate the different rows of the cube”.

The background

 In 1999 the UK- based toy company Seven Towns Ltd. registered the shape of Rubik’s Cube as three dimensional EU Trademark for “three-dimensional puzzles” in Class 28 of the Nice Agreement concerning the International Classification of Goods and Services. The Applicant claimed no particular color for the trademark, nor did it provide a description.

Seven years later the German competitor Simba Toys filed an application before the EUIPO for a declaration of invalidity of that registration, on the ground that the rotating capability actually implied a technical solution that should only have been protected with a specific patent and not with a trademark (on the basis of Articles 59 and 7 of EU trademark community Regulation).

General Court’s first ruling:

In 2009, further to the rejection of the application for invalidity, Simba Toys brought an action for annulment of EUIPO’s decision before the General Court of the European Union.

On November 25, 2014 the Appeal was firmly rejected: the General Court stated that the essential features of the Cube did not prevent it from being protected as a trademark. In addition, the General Court, in its ruling, also held that the technical solution did not actually result from the shape but from a non-visibile mechanism located at the centre of the cube itself.

The CGUE solution and the new EUIPO’s ruling

Simba Toys then lodged an appeal against the General Court’s decision before the EU Court of Justice (CJEU). On November 10, 2016 the CJEU set aside the General Court decision, overturning the previous ruling. On the matter, by examining whether the registration should be rejected because the shape of the cube involved a technical solution, the CJEU rejected both the General Court and the EUIPO’s rulings. According to the CJEU, the EUIPO and the General Court should have taken into consideration not only the sign’s graphic representation, but also other elements (even invisible ones) of the product related to the functionality of the good itself, such as its rotating capability.

The matter thus returned to the EUIPO. The First Board of Appeal stated that the graphic representation of the contested mark revealed the following three essential characteristics: firstly, the overall cube shape; secondly, the black lines and the resulting little squares on each face of the cube; and thirdly, the differences in the colors on the six faces of the cube. Based on this statement, the Board of Appeal considered that each of them, as fundamental characteristics, was essential to achieve the final technical result of the Cube, i.e. the presence on each face, following a series of horizontal and vertical rotation operations, of a single color common to all nine squares. On this point, however, it was noted that the European Trademark Regulation No. 40/94 did not allow the registration of a shape whose essential characteristics are necessary to obtain a precise technical result. Consequently, the EUIPO invalidated the registration in its entirety and cancelled the trademark from the register.

In the light of this ruling, Rubik’s Brand Ltd. (in 2014 the registration of the mark was assigned to this company) applied to the General Court of the European Union.

The general court’s recent ruling

By its recent decision of October 24, 2019 the General Court emphasised that the EUIPO’s Board erred in identifying that differences in the colors of the six faces of the cube constitute an essential element of the mark. This is highlighted for two reasons: firstly, in the application for registration of the contested mark, such importance in terms of colour variety has never been underlined by the Applicant and, moreover, with a simple visual analysis of the graphic representation of that mark it is not possible to identify the difference in colour between the six faces.

Besides, the General Court then aligned itself with EUIPO’s previous ruling, pointing out that the black lines are an essential element to achieve the expected technical result. They create a physical separation which is necessary to rotate the different rows horizontally and vertically thanks to a specific mechanism located at the center of the cube.

Finally, the General Court focused on the second further essential element represented by the overall cube shape. In this regard, the ruling clearly stated that the shape can be no more than a ‘Cube’, a regular hexahedron since it is inseparable both from the grid structure consisting of the black lines and from the function of the actual goods at issue, which is to rotate vertically and horizontally the rows of the small cubes. In the light of this, the two essential Rubik’s Cube elements, which have been also correctly qualified by EUIPO, are extremely necessary to obtain the technical result consisting in the ability of that good to rotate in the contested form. Therefore, for this reason, it is not possible to register this shape as a European Union trademark.