At the request of Seven Towns, a British company that manages, among others, intellectual property rights on the "Rubik's Cube", the European Union Intellectual Property Office (EUIPO) registered in 1999 as a three-dimensional mark of the Union for « three-dimensional puzzles »the following cubic form:
In 2006, Simba Toys, a German toy producer, requested the EUIPO to annul the three-dimensional mark alleging, specifically, that it incorporated a technical solution consisting of its rotation capacity, and that said solution could only be protected by a patent, and not Through a brand. The EUIPO dismissed his request, so Simba Toys filed an appeal with the General Court of the European Union in order to annul the EUIPO resolution.
The General Court dismissed Simba Toys' appeal by a judgment of November 25, 2014, considering that the controversial cubic form did not incorporate a technical solution that prevented it from being protected as a trademark. In particular, the General Court stated that the technical solution that characterizes Rubik's cube does not result from the characteristics of this form, but rather from an invisible internal mechanism of the cube.
Simba Toys filed an appeal against the judgment of the General Court before the Court of Justice, which, by its judgment of November 10, 2016, annulled both the judgment of the General Court and the EUIPO resolution. In that judgment, the Court observed that, in examining whether the registration should be refused because the cubic form at issue incorporated a technical solution, the EUIPO and the General Court should have also taken into account the invisible functional elements of the product represented by that shape, like its ability to rotate.
Following the judgment of the Court of Justice, the EUIPO had to adopt a new resolution taking into account the provisions of the Court of Justice. By resolution of June 19, 2017, the EUIPO declared that the representation of the controversial cubic form consisted of three essential characteristics: the cube shape itself, the black lines and the squared faces of the cube, and the color difference of each one of the six faces of the cube. In this context, the EUIPO considered that all the essential characteristics were necessary to obtain the technical result consisting of swinging on a shaft, vertically and horizontally, rows of smaller cubes of different colors that are part of a larger cube until the nine squares of each face of said cube are the same color. However, given that the Union Trademark Regulation does not allow the registration of a form whose essential characteristics are necessary to obtain a technical result, the EUIPO concluded that the contested trade mark had been registered in breach of said Regulation, and therefore canceled its registration.
Rubik’s Brand Ltd, current owner of the contested brand, challenged this latest EUIPO resolution before the General Court.
By today's judgment (available here), the General Court begins by stating that the EUIPO's resolution suffers from an error of assessment, to the extent that the EUIPO considered that the color difference of each of the six faces of the cube It was an essential feature of the contested brand. In this regard, the General Court states, on the one hand, that Rubik's Brand has not stated at any time that it considers that the possible presence of colors on each of the faces of the cube had an important role in the registration of the contested mark and , on the other hand, that a simple visual analysis of the graphic representation of this brand does not allow to distinguish with sufficient precision the existence of a different color on each of the six faces of the cube.
The General Court then confirms the validity of the definition of the technical result contained in the contested decision. In this context, on the one hand, the General Court observes that the controversial cubic form represents the aspect of the specific product for which registration was requested, in the present case, the three-dimensional puzzle known as "Rubik's Cube". On the other hand, the General Court notes that this product is a game whose purpose is to reconstitute a three-dimensional color puzzle with a cube shape forming six faces of different color and that this purpose is achieved by pivoting on an axis, vertically and horizontally, rows of smaller cubes of different colors that are part of a larger cube until the nine squares of each face are the same color.
Regarding the analysis of the functionality of the essential characteristics of the contested mark, the General Court considers, like the EUIPO, that the essential characteristic related to the black lines that intersect, horizontally and vertically, on each of the faces of the cube, dividing them into nine small cubes and of equal dimensions distributed in rows of three by three, it is necessary to obtain the desired technical result.
Indeed, these black lines represent a physical separation between the different small cubes, which allows the player to rotate each row of small cubes independently to regroup them, in the desired color, on the six faces of the cube. This physical separation is necessary to swing the various rows of small cubes, vertically and horizontally, thanks to a mechanism housed in the center of the cube. Without this physical separation, the cube would be nothing more than a uniform block, without individual elements that could move independently.
With regard to the essential characteristic constituted by the cube form itself, the General Court declares, like the EUIPO, that the cubic form is inherent, on the one hand, to the gridded structure, formed by the intersecting black lines on each of the faces of the cube and each one divided into nine small cubes of equal dimensions distributed in rows of three by three, and, on the other hand, the function of the specific controversial product, which consists in swinging horizontally and vertically the rows of small cubes. In view of these elements, the product can only have, in effect, a cube shape, that is, a regular hexahedron.
In these circumstances, the General Court concludes that, although the color differences of each of the six faces of the cube do not constitute an essential characteristic of the contested mark, the two characteristics of this mark that have been correctly qualified as essential by the EUIPO are necessary to obtain the result pursued by the product, represented by the controversial cubic form, so that the latter should not have been able to register as a Union mark. Consequently, the General Court confirms the contested decision and dismisses the appeal of Rubik’s Brand.