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 24th 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!
[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
