The Rubik’s Cube and three-dimensional trade marks

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The Rubik’s Cube was registered as a three-dimensional EU trade mark with the European Union Intellectual Property Office (EUIPO) in 1999.  The trade mark was registered in respect of “three-dimensional puzzles”.

A German toy-manufacturing company, Simba Toys, has applied to the EUIPO to have the mark cancelled, in particular on the ground that that it involves a technical solution, consisting of a rotating capability, and that such a solution may be protected only as a patent and not as a trade mark. This matters in particular because the patent for the cube has expired.

That action was considered and dismissed by the lower of the EU’s two courts, the General Court, in 2014.  The General Court held that the graphic representation of the shape of the Rubik’s Cube did not involve any technical function such as to preclude it from protection as a trade mark and therefore it could be registered.  Simba has since appealed to the higher of the two EU courts, the Court of Justice of the European Union (CJEU).

Prior to the CJEU ruling the Advocate General has opined on the issue. An Advocate General’s Opinion is not binding on the CJEU but rather is a proposal to that court of a legal solution to the problem before it.  Although an Advocate General’s Opinion is not binding on the CJEU, although in practice they are followed by the Court more often than not.

The Advocate General’s Opinion takes issue with the General Court, finding fault with the approach it followed. The Advocate General suggests that 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 “a brain-teaser consisting of logical arrangements of moveable elements”.  Had it done so, the Advocate General continues, the Court could not have rejected Simba’s submission that the cube will be perceived as consisting of movable elements divided by black lines.  The position taken by the General Court was that the rotating capability of the cube results neither from its black lines nor grid structure but from an internal mechanism that is not visible on its graphic representations and that, as a consequence, the registration does not prevent other companies from making different three-dimensional puzzles which do not have the same surface layout as the cube.

The Advocate General also argues that the trade mark for the cube harms international competition as the mark’s proprietor could “extend its monopoly to the characteristic of goods which perform not only the function of the shape in question but also other, similar functions”.

We shall provide an update when the CJEU delivers its ruling.