On 25 May 2016, Advocate General Szpunar gave his opinion on the validity of an EU trade mark registration for the shape of the Rubik's Cube.  The Advocate General's opinion concerns Article 7(1)(e)(ii) of European Union Trade Mark Regulation (EC) No 207/2009 and the public interest which underlies that provision.

The story began in 1996 when Seven Towns Limited ("Seven Towns") filed an EU trade mark application to register the shape of the Rubik's Cube, shown below, in connection with "three dimensional puzzles" in Class 28:

Click here to view the image.

The shape mark became registered in 1999.  However, in 2006, German toy manufacturer Simba Toys GmbH & Co KG ("Simba Toys") applied to have the registration declared invalid.  Simba Toys raised a number of grounds for invalidity including under Article 7(1)(e)(ii) which prohibits the registration as EUTMs of: "signs which consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result".  Seven Towns successfully defended the application for invalidity at first instance and before the Board of Appeal and General Court.  Simba Toys appealed to the Court of Justice of the European Union ("CJEU") and raised six grounds on which it contested the General Court's decision.  The Advocate General's opinion focuses on the ground of appeal under Article 7(1)(e)(ii).

An assessment of Article 7(1)(e)(ii) requires the competent authority to identify the essential characteristics of the contested trade mark and evaluate whether those characteristics fulfil a technical function inherent in the goods concerned.

The General Court found that the shape of the cube and the grid structure are the essential characteristics of Seven Towns’ mark.  Simba Toys did not contest that finding   However, when it came to assess the technical function, the General Court limited its examination to the graphical representations of the mark as filed and refused to consider external factors that an observer cannot"fathom precisely" from those representations.  Since the representations do not show that the mark has moveable or rotating parts, the General Court rejected Simba Toys' claim that the black lines of the cube’s grid divide the movable elements of the puzzle and perform the technical function of a three dimensional puzzle.  To hold otherwise would have meant speculating about the internal mechanics and invisible features of the shape. 

The Advocate General rejected the General Court's assessment of Article 7(1)(e)(ii) on three counts.  

First, in the Advocate General’s view, "in order to carry out a proper analysis of the functional features of the shape the General Court should have first taken account of the function of the goods concerned, namely the three-dimensional puzzle, that is to say a brain-teaser consisting of a logical arrangement of movable elements. Had the General Court taken account of that function, it could not have rejected the appellant’s claim that the cube in question will be perceived as consisting of movable elements divided by black lines.”

Second, the Advocate General claims that the relationship between the shape of the mark and the function of the goods applied for will often require consideration of external factors.  This does not necessarily involve finding hidden characteristics that are not visible in the shape as filed.  Rather, it involves an analysis of "the characteristics of the shape arising from the graphic representation from the point of view of the function of the goods concerned."  This meant recognising that three dimensional puzzles, by their very nature, incorporate moving or rotating parts.  It may therefore be inferred that the black lines shown in Seven Towns’ shape mark indicate the rotatable elements of a puzzle.  

Third, by allowing registration of the shape mark, the General Court has effectively granted Seven Towns' exclusive rights to all types of puzzles with a similar shape – regardless of whether the elements of the shape are rotatable (such as the Rubik's Cube), designed to be taken apart and reassembled (such as the Soma Cube) or have some other function.  In the Advocate General's opinion, this is unduly broad and at odds with the public interest underlying Article 7(1)(e)(ii) "since it makes it possible for the proprietor to extend its monopoly to the characteristics of goods which perform not only the function of the shape in question but also other, similar functions."      

The opinion appears sensible in the way that it acknowledges that the Court needs to know how a product works in order to consider whether the shape is necessary to achieve a technical result. The Advocate General stressed that shapes with essential characteristics which are inherent in the generic function of the goods concerned must be denied registration. The matter will now be considered by the CJEU.  Assuming the CJEU follows the Advocate General's opinion, the decision will serve as confirmation that the threshold for registering pure shape marks is high in the EU.  It may also be that there are registered EU shape marks that do not meet that threshold and may technically be invalid as a result.