To be or not to be a trademark . A lectio juris on the Rubyk cube case

The Rubik’s Cube is the one of the largest selling toys ever released, and despite being invented over 40 years ago, it remains as one of the best-selling and most popular toys of all time, on the same level as Lego[1]. The story of the patenting of the Rubik Cube is by itself a soap opera, almost as complicated as the story of its trademark protection (to be developed in a future article).

a.                     Once upon a time… Brief aide-mémoire

Once upon a time, long ago, in a faraway place, a man invented a cube filled with wonder. Several years after the fantastic invention, in 1999, a company,  Seven Towns,  the owner of the intellectual property rights in the famous cube , registered the shape of the cube as a three-dimensional EU trademark with the European Union Intellectual Property Office (EUIPO) However, the registration was only the starting point of the saga.

In 2006, Simba Toys, a German toy manufacturer, applied to EUIPO for a declaration of invalidity of the three-dimensional trade mark on the ground, inter alia, that it involved a technical solution consisting of its rotating capability, as such a solution may be protected only by patent and not as a trade mark[2].  The application was dismissed by the EUIPO, but the decision was appealed by Simba Toys in front of the General Court of the European Union. By its judgment of 25 November 2014,1 the General Court confirmed the EUIPO decision and dismissed the action brought by Simba Toys on the ground that the cube shape in question did not involve a technical function such as to preclude it from being protected as a trademark. The General Court ruled that “the technical solution characterising the Rubik’s Cube did not result from the characteristics of that shape but, at most, from an invisible mechanism internal to the cube”[3].

The decision was appealed in front of the Court of Justice. By its judgment of 10 November 2016,  the Court of Justice set aside the judgment of the General Court and annulled EUIPO’s decision, stating that “the General Court interpreted the criteria for assessing Article 7(1)(e)(ii) of Regulation No 40/94 too narrowly, in that it took the view, inter alia in paragraphs 57 to 59 of the judgment under appeal, that for the purpose of examining the functionality of the essential characteristics of the sign concerned, in particular the grid structure on each surface of the cube, the shape at issue, as represented graphically, should have been taken as a basis, without necessarily having to take into consideration any additional circumstances which an objective observer would not have been able to ‘fathom precisely’ on the basis of the graphic representations of the contested mark, such as the rotating capability of individual elements in a three-dimensional ‘Rubik’s Cube’-type puzzle.”[4]

Following the judgment of the Court of Justice, the EUIPO had to render a new decision taking into consideration the findings of the Court.  By decision of 19 June 2017, EUIPO stated that the representation of the cube shape at issue revealed three essential characteristics, namely the overall cube shape, the black lines and the little squares on each face of the cube, and the differences in the colours on the six faces of the cube. In that context, EUIPO considered that each of those essential characteristics was necessary to obtain a technical result from an operation consisting in axially rotating, vertically and horizontally, rows of smaller cubes of different colours which are part of a larger cube until the nine squares of each face of that cube show the same colour.

EUIPO thusly concluded that the mark at issue had been registered in breach of that regulation and, accordingly, cancelled its registration. The current owner of the rights in the Rubik Cube, namely Rubik Brands Ltd, challenged EUIPO’s the decision in front of the General Court in what seemed to look like a never-ending story.

b.                     20 years after (and no, it’s not about Alexandre Dumas’ novel)

In support of its action, the applicant relied on four pleas in law. The first plea alleged the infringement of Article 7(1)(e)(ii) of Regulation No 40/94. The second plea alleged the infringement of Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001). The third plea alleged the infringement of the second sentence of Article 75(1) of Regulation No 207/2009 (now the second sentence of Article 94(1) of Regulation 2017/1001). The fourth plea alleged infringement of Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001).[5]

The General Court finds, first of all, that EUIPO’s decision is vitiated by an error of assessment in so far as EUIPO considered that the differences in the colours on the six faces of the cube constituted an essential characteristic of the mark at issue. In that regard, the General Court points out, first, that Rubik’s Brand never claimed that, in its view, the possible presence of colours on each of the faces of the cube played an important role in the context of the registration of the mark at issue and, second, that a simple visual analysis of the graphic representation of that mark does not make it possible to discern with sufficient precision the existence of differences in the colours on the six faces of the cube.[6]

The Court ruled that “In particular, when the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trade mark once the patent has expired would considerably and permanently reduce the opportunity for other undertakings to use that technical solution. In the system of intellectual property rights developed in the European Union, technical solutions are capable of being granted protection only for a limited period, so that subsequently they may be freely used by all economic operators (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 46).”

Also, it  further stated that “by restricting the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result, the legislature duly took into account that any shape of goods was, to a certain extent, functional and that it would therefore be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional characteristics.” The European Judge tried also to shed some light over the terms that have been the bone of contention of this trademark dispute, namely   ‘exclusively’ and ‘necessary’, stating that “solely shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 48).”

When it comes to the assessment of the technical function, the Court stated that  “The technical functionality may be assessed, inter alia, by taking account of the documents relating to previous patents describing the functional elements of the shape concerned (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 84 and 85).”

The General Court states that, although the differences in the colours on the six faces of the cube do not constitute an essential characteristic of the mark at issue, the two characteristics of that mark which have been correctly identified as essential by EUIPO are necessary to obtain the intended result of the product represented by the cube shape at issue.

c.                      Happily ever after? Not exactly.

On the 24^th of October, the General Court of the European Union upheld the decision to remove the cube's trademark protection, ruling that :  "Given that the essential characteristics of that shape are necessary to obtain the technical result consisting of the rotating capability of that product, that shape could not be registered as an EU trademark”.

It results that the Rubik cube was a mind-twister for the IP world also, and, are we to think of the duration of this saga, there’s one thing I can be sure about: neither EUIPO, nor the ECJ seem to be fans of speedcubing!

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[1] According to https://ruwix.com/the-rubiks-cube/rubiks-cube-patent-intellectual-property/

[2] https://curia.europa.eu/jcms/upload/docs/application/pdf/2019-10/cp190131en.pdf

[3] Case: T-450/09 Simba Toys GmbH & Co. KG v OHIM.

[4] Case: C-30/15 P,Simba Toys GmbH & Co. KG v EUIPO

[5] Case T‑601/17, RubiK Brand Ltd vs. EUIPO.

[6] https://curia.europa.eu/jcms/upload/docs/application/pdf/2019-10/cp190131en.pdf

The ECJ War of Fruits - Apple Inc. vs Pear Technologies Ltd.

Would you prefer an Apple or a Pear? No, this discussion is not bound to remain confined between the walls of a grocery store, but may be heard also in a tech shop.

And, if Apple hoped until recently that an IP suit will succeed to stop that odd conversation from happening in the future, the ECJ might have just ruined their hopes, in a thunderbolt decision that just stated that apples are different from pears (rocket science, yes).

The ECJ states that: ”In those circumstances, it is inconceivable that the relevant public displaying a high level of attention will use the term ‘fruit’ instead of ‘pear’ or ‘apple’ when referring to the conflicting marks.”

What might have escaped the ECJ’s notice is, (to paraphrase a character from J.K.Rowling’s bestseller, Harry Potter),  is precisely that  fame is everything indeed when it comes to trademarks (well, McDonalds may have a different opinion here, but that’s another discussion that you may find here).

However, the story is not at all brand new. Once upon a time, there was a bunch of creative engineers who designed a system for medical imagery, named OsiriX (quite creative, I would say, to combine the ideas of the Egyptian god and the medical imagery). The software grew up in one year like others in ten and it gradually developed a version that was no longer open source.

This was the moment when some other guys continued to develop basically the same software with the same graphics and main functionalities, while naming it… completely unrelatedly, of course, Horos, who is, no one else that another Egyptian god, son of Osiris. Despite the over-simplified manner of presenting this story, that is far more complex than that, the idea is that the two software providers had, as expected, a love-hate relationship and nowadays, they share the same market, more or less peacefully (as you can see here https://www.purview.net/blog/horos-v.-osirix-whats-the-difference ).

Could this be the case for the Apple – Pear reinterpretation of the War of Fruits? If you ask me, only in appearance. Because the two software providers have both contributed to the development of the software, at least until a certain point. There was a conceptual quarrel out there, and the name is thought to have been chosen that way to sanction somehow a deviation from the credo of the initial project.However, things are different here. Yes, maybe apple and pear are not similar by themselves, but one cannot say that choosing a fruit as a trademark for electronics is quite a random decision, particularly when, guess what! there is another fruit used as trademark, also for electronics – and quite successfully, I would say.

The ECJ launches afterwards in a discussion where it speaks about an analysis of the commonalities presented by the actual ‘pear’ and ‘apple’ products, followed by an excursus in the Rosaceae and subpoemiaedae family of fruits (I’ve lost you, haven’t I?). While reading the ECJ’s decision, I remembered the joke with the old lady that asks for an acetylsalicylic acid in a drug store, because she forgot the banal name of aspirin.

The arguments of the ECJ are glorious in their lack of substance, as the argumentation does not bring any serious elements, but for the blatantly obvious distinction between the two subjects of the debate - pears and apples are two fruits which are closely related in a biological sense. Really?!

I am definitely certain that when one is tempted to buy either an Apple or a (potentially cheaper version) Pear, they do not have in mind the biological perspective in any way.Therefore, a very thorough analysis of the comparison between apple and pear is in my opinion, useless. I don’t assume there is someone believing that apples and pears are visually similar. At least, not someone aged more than 3.  Consequently, the battle should have been moved more on the conceptual battlefield.

And here, we see that ECJ also ruled that „The Board of Appeal also noted that the conflicting marks differed in that the mark applied for contained the word ‘pear’, did not represent a fruit which had a bite taken out of it and contained several black rectangular shapes inside the figurative element.”  Of course, it is widely known that Apple’s apple would not be the same without the bite taken out of it, but the bite is only one element that contributes to the global distinctiveness of Apple’s trademark. A survey asking consumers what is more representative for Apple, the apple itself or the bite taken out of it may reveal surprising conclusions.

In Sabel, the Court ruled that a puma and a cheetah are conceptually similar. The ECJ seems to stick to the theoretical principle according to which „ it should be recalled that, according to the case-law, the existence of a conceptual similarity stems from the fact that both marks use images with a similar semantic content”. But after this correct premise, the ECJ seems to jump to an artificial and inconspicuous conclusion -  “it should be observed that the conceptual similarity between the signs concerned in the abovementioned case was based, according to the referring court, on the fact that both were using the image of a ‘bounding feline’ and therefore was not based on the fact that pumas and cheetahs shared several characteristics in real life”.  

Are we likely to assist to an apple – pear coexistence on the market? Theoretically, yes. Practically, it’s hard to believe that they target the same consumers. Elements such as price, quality, technical features and like I was just saying, targeted consumers are of a crucial importance and it is difficult to predict whether this will actually become a matter of interest in terms of sales and figures, but it will definitely be a supplementary inquiry for the American tech giant, a pear in the apple, to paraphrase a common idiom.

Well, I might not be convinced at all of the ECJ’s judgment on the merits of the case – but there is still one thing that will remain deeply engraved in my mind after this caselaw – that pears and apples are closely related in a biological sense.

The story seems to close with `to be continued` rather than with `the end`, as it is still debatable if we shall witness a fruit salad or a bloody war of fruits. 

Old McDonald(s) had BigMac

Old McDonald(s) had BigMac

.. and it doesn’t own it any more.

No, it did not sell it to competition. And no, it did not proceed to a rebranding. And again no, it did not simply abandon it.

What happened instead is that the EUIPO Cancellation Division (hereinafter the “CD”) issued  a decision in the Supermac case, upholding Supermac’s application for revocation and revoking McDonalds – the EUTM proprietor – ‘s rights in the  BigMac trademark, for nothing less than… insufficient use. This is certainly the type of decision that would make Jamie Oliver and the vegan world throw a pantagruellic rucola party, but to be very honest, not even the fiercest enemies of fast food would have expected it.

When it comes to McDonalds, we are all tempted to believe that there is nothing more used and abused in terms of trademarks and branding. Cancellation for non-use? No, absolutely not, that happened to Mom’s registration of spinach wonder-cookies, which she neither sold nor advertised since I was five, but not to McDonalds. And if we are to think about potential threats to the famous brand, we may suspect their Happy Meal and McAlmost-anything-eatable to enter in the dictionaries rather than lacking genuine use.

However, it seems that at least from EUIPO’s perspective, BigMac is not big enough. Or, at least, not used enough.

The CD’s decision might have fallen like a bolt from the blue for the fast food giant, whom we might accuse of anything in the field of branding and advertising, except for negligence (although we may suspect that heads have fallen in the IP division or.. cough cough…elsewhere).

BigMac is certainly a symbol for McDonalds and it may be questionable that such a decision will really convince the IP world or even laymen regarding its grounds, or in the event of a favorable appeal decision, it will be soon forgotten.

It looks like the old banking principle too big to let fail, does not apply in IP. And if it’s true that there are indeed trademarks that literally became dictionary words, this was not the charge brought against BigMac.

As stated right from the beginning of the Summary of the Parties’ arguments, “the applicant argues that the EUTM was not put to genuine use during a continuous period of five years following the date of registration in relation to any of the registered goods and services. The applicant requests that the EUTM be revoked in its entirety with an earlier date, namely five years from the date of registration.”

Of course, McDonalds did not turn the other cheek, but filed evidence of use. Probably convincing, if you ask their representatives, insufficient, if you ask the CD. And, given that the CD was the one who judged the case, guess what happened?!

In the Grounds of the Decision, the CD kindly reminds us what the genuine use of a TM is, namely  - “the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services.” Until now, everything is as clear as daylight.

So, let’s see how McDonalds understood to defend one of its biggest IP fortresses, by analyzing the evidence submitted, as provided by the CD’s decision:

a.     

a.     3 affidavits, signed by representatives of McDonald’s companies in Germany, France and the United Kingdom claiming significant sales figures in relation to ‘Big Mac’ sandwiches for the period between 2011 and 2016

Now, without any bias, this sounds more like self-produced evidence. It is obvious that independent evidence does not mean exactly an affidavit from McDonalds ’representatives.  Therefore, in this respect, high-five for the CD’s conclusion – “As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence”.

b.     Brochures and printouts of advertising posters, in German, French and English, showing, inter alia, ‘Big Mac’ meat sandwiches; and packaging for sandwiches (boxes); the materials appear to originate from the EUTM proprietor and are dated between 2011 and 2016. The brochures and posters show a sandwich on the menu along with other products, or on its own, and the prices are also provided on some of the materials; other documents appear to be blank menus in which the price can be filled in. The EUTM appears on the submitted material in relation to sandwiches.

Houston, we’ve got a problem! Brochures and printouts of advertising posters should be a valid proof of use.  And generally, it is almost normal for these materials to originate from the EUTM’s proprietor (of course, as long as they have been effectively used during the relevant period and have not been designed and printed the night before submission).

Also, if we are to read this decision with a critical eye, we can a spot a gap of logical sequence: On the one hand, the Cancellation Division states that “It is noted that all of the remaining evidence (the affidavits having been already analysed above) originates from the EUTM proprietor itself, this includes the printouts from the proprietor’s own websites, promotional brochures and packaging”. On the other hand, after having stated that all of the remaining evidence come from the EUTM proprietor, the CD strikes with “Part of the submitted evidence, that is, the printouts, originate from the internet.”  What is in fact, the point of revoking a TM for non-use other than sanctioning the proprietor for not being diligent enough to advertise it, market is, bring it in the consumer’s attention? Ok, we should not take the EUTM proprietor’s word for granted (which would be the case of affidavits), but it is a proof of diligence to have the products promoted on the internet.

c.     Printouts from the websites www.mcdonalds.de, www.mcdonalds.at, www.mcdonalds.be, www.mcdonalds.cz, www.mcdonalds.dk, www.mcdonalds.es, www.mcdonalds.fi, www.mcdonalds.fr, www.mcdonalds.hu, www.mcdonalds.ie, www.mcdonalds.it, www.mcdonalds.nl, www.mcdonalds.pl, www.mcdonalds.ro, www.mcdonalds.se, www.mcdonalds.si, www.mcdonalds.sk, www.mcdonalds.co.uk, dated between 07/01/2014 and 03/10/2016. They depict a variety of sandwiches, inter alia ‘Big Mac’ sandwiches, some of which state that they are sandwiches made with beef meat.

These are analysed in bulk by the CD. No particular explanation, just a sibylline formula according to which “the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use, unless the website also shows the place, time and extent of use or unless this information is otherwise provided”.

The explanation does not do any good: “In particular, the value of the internet extracts in terms of evidence can be strengthened by evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period and in the relevant territory”.

The fog becomes thicker. And now, let’s take some distance and analyse – McDonalds is not a high-class 3 Michelin Stars Fine-Dining-Cuisine restaurant. No! It is one of the giants in the fast-food industry. And if you want to eat fast, you do not enter the website, analyze the Menu and then eclectically spoil yourself with a BigMac and a fine wine. No, this is not how things work in real life (and fast food) – you just go around the corner and grab a BigMac or McSomething, and most of the times you do this because it is the fastest (and sometimes cheapest) solution to save you from starvation in no time. Does the traffic on the websites seems that significant in these conditions? It was a rhetorical question, of course.

d.     A printout from en.wikipedia.org, providing information on ‘Big Mac’ hamburger, its history, content and nutritional values in different countries.

Wikipedia is Wikipedia. And if Wikipedia mentions something, then this may be an indicator of the degree of knowledge the general public has on the subject. However, for the sake of justice, we should mention in the defense of the CD that we do not have information regarding the `age` of that Wikipedia page. If it was created 10 years ago, then they are right, it can hardly be considered evidence of use.

In any case, however biased this analysis might seem, I have to admit that the CD has a point: The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

Remember what I was saying about heads falling? The EUTM proprietor chose to restrict the evidence submitted- this is the elevate and polite way of the CD to say: guys, you’re McDonalds, are you nuts? You could have brought so much more relevant evidence! Did the dog eat your evidence or what?!

Well, I owe my reader(s?) honesty. I was indeed outraged of the idea of BigMac being revoked for non- use. And I am still of the opinion that this was not one of the CD’s best days for science, but in the end, we are the architects of our own rise and/or fall; because in the IP world, before submitting does-not-matter-what-just-throw-there-something-‘cuz-we’re famous- evidence of use, one should submit it to a thorough analysis. It seems as McDonalds has just learnt from this embarrassing lesson, that no EUTM proprietor is too big to let fail.

And now, let the betting season for the appeal start. Bring your popcorn (or BigMac, upon the case) and let’s see what happens in front of the Board of Appeals.

PS: Special thanks to my special illustrator :) 

IP through the looking glass

Dear Guest,

Welcome to a new IP dimension! Here we turn trademarks, designs, patents, copyright, domain names and you name it what other IP-related issues upside down and analye caselaw with the most critical eye.

I'm a writer disguised in an attorney at law and this blog is my manifesto, because IP is more than Law. IP is creation , is feeling, is discovery, sense and sensitivity combined with crazy innovation.

Follow me and let's set sail in the IP wonderland!

Sincerely,

Ionela