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Following lengthy office proceedings, a Trade Mark dispute concerning the world's best selling toy appears to be drawing to a close.
Invented by Erno Rubik in 1974, the Rubik's cube was registered as a Trade Mark in 1999. Seven years later, invalidity proceedings were initiated by Simba Toys, which sought to have the Trade Mark cancelled. This objection was first dismissed by OHIM (now known as the EUIPO) in 2008. Later, in November 2014, the EU General Court (EGC) dismissed Simba's appeal, upholding the Trade Mark. Simba is now appealing that decision to the EU Court of Justice (ECJ).
Central to Simba's appeal is that the "technical solution consisting of rotating capability" may well be protected by patent, but not as a Trade Mark. In the ECJ, Advocate General Szpunar has distanced himself from the EGC's 2014 decision. At the time, the EGC noted that it "was not the intention of the legislature that a shape of goods would be refused as a Trade Mark solely on the ground that it has functional characteristics".
The Advocate General has criticised the EGC's insufficient analysis between the function and the characteristic of the challenged Trade Mark. The vague language used by the EGC, which went so far as to claim that "any shape of goods is to a certain extent functional" in their reasoning was also criticised.
Moreover, Advocate General Szpunar cautioned that the findings of the EGC are contrary to the public interest. He paid particular attention to how the language used in the 2014 decision could broaden the parameters for proprietors, enabling them to extend their monopoly to the characteristic of goods which perform not only the function of the shape in question, but also similar features, with the potential to cover every three dimensional puzzle with a 3x3x3 grid on the face of the cube.
He concluded that the Trade Mark should be struck down as it would "unduly impair the opportunity for competitors to place goods on the market shapes of which incorporated the same technical solution"
It remains to be seen whether the ECJ follows the opinion of the Advocate General and sets aside the previous rulings of the EGC and EUIPO.