Decision of the EU Court of Justice on the protection of Rubik's Cube as a trademark

December 29, 2016

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On past November 10th, the Court of Justice of the European Union (CJEU) decided on the possibility of registering the famous Rubik’s Cube as trademark.

On 1 April of 1996, Seven Towns Ltd. filed a European Union trademark application at the European Union Intellectual Property Office (EUIPO, formerly OHIM) concerning the stressed trademark application, which ended up being registered on 6 April 1999. However, on 15 November 2006, Simba Toys claimed that composite signs comprised exclusively by the shape of the product necessary to obtain a technical result should be rejected, using Article 7 of Regulation No 40/94 (Currently Regulation 207/2009) as a legal basis to support their claim. Nevertheless, in 2008 the Invalidity Division of EUIPO rejected the appeal in its entirety. Following new appeal, this time brought before the General Court, the application for appeal was once more denied.

In the aforementioned decision, the Court of Justice considered that the General Court erred in law upon analyzing the trademark’s characteristics (that is to say, the black lines and, more broadly, the checkered structure that exists in each of the cube’s face), rejecting that these fulfill a technical function, and, consequently, it does not invalidate the trademark application. According to CJEU, the incorrection resided on non-considering the rotating capability of the horizontal and vertical straps of the Rubik’s Cube as one of its essential characteristics. Both the General Court and EUIPO’s Chamber of Appeal decided on non-considering this characteristic due to the fact of it being determined by an inner and invisible mechanism and therefore, it was not in conformity with the requirement that any inference must be drawn as objectively as possible from the shape in question, as represented graphically, and with sufficient certainty.

In its conclusions, the CJEU considered that to analyze the functionality in light of Article 7 of Regulation No 40/94, the essential characteristics of a shape shall be assessed in accordance with the product’s specific technical function. Thus, being the Rubik’s Cube sign formed by the shape of a concrete product, not by an abstract shape, the General Court should have defined the technical function of the concerning product, which is a tridimensional puzzle, and should have taken that fact into consideration when assessing the functionality of the characteristics of the stressed sign.

CJEU proceeds with its argumentation and concludes that, in case, the technical function of the concrete product represented by the cube’s sign was not to be considered, the trademark’s applicant would be allowed to extend the protection conferred by this trademark’s registration to any kind of resembling puzzle (which elements represent the shape of a cube, regardless of its operating method). Moreover, this possibility would be contrary to the above-mentioned article’s scope, which consists in avoiding a company’s monopoly on a product’s technical solutions or utilitarian characteristics.

In conclusion, both 2009 decision of EUIPO’s Board of Appeal and 2014 judgment of the General Court of the EU were annulled. This matter shall now return to EUIPO.


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