EU General Court confirms that the Rubik’s cube cannot be registered as an EU trade mark

by Tougane Loumeau (GIDE LOYRETTE NOUEL – France)

Rubik’s Brand Ltd v. EUIPO and Simba Toys GmbH & Co. KG; GCEU, Eighth Chamber, October 24, 2019, case number T-601/17, ECLI:EU:T:2019:765

On 24 October 2019, the EU General Court ruled that the shape of the famous Rubik’s cube cannot constitute a valid trademark of the European Union to cover ‘three-dimensional puzzles’.

Such a trademark had been accepted for registration by the EU Intellectual Property Office (EUIPO) in 1999. The legal saga started in 2006 when Simba Toys, a German toy manufacturer, filed an application for a declaration of invalidity of the mark. This action was dismissed by the EUIPO (first by the Cancellation Division and then, by the Board of Appeal (BoA)). The BoA considered, inter alia, that the contested mark did not violate the rule under which signs consisting exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered. It observed that the application of that rule had to be founded only on the examination of the representation of the mark as filed and not on any alleged or supposed invisible features. It stated that the representation consisted of ‘three perspectives of a 3 x 3 x 3 cube, where each square facet is separated from neighbouring facets by a black contour’ and that those graphic representations were not suggestive of any particular function.

Simba Toys lodged an appeal which the General Court (GC) dismissed on November 25, 2014. The GC found that the essential characteristics of the contested mark consisted of a cube and a grid structure which appears on each surface of that cube, and that those essential characteristics did not perform a technical function of the goods at stake. According to the GC, the BoA was right not to have included the rotating capability of the individual elements of the cube in its analysis, since this was an invisible element.

This judgment was quashed on November 10, 2016 by the EU Court of Justice which also annulled the EUIPO’s initial decision. The CJEU found that the General Court erred in law in that it did not define the technical function of the actual goods at issue, namely a three-dimensional puzzle, whereas it should have taken that into account when assessing the functionality of the essential characteristics of that sign.

The case was referred back to the EUIPO’s BoA, which, by decision of 19 June 2017, declared the contested mark invalid. Rubik’s Brand Ltd appealed to the General Court which issued the discussed judgment that upholds the BoA‘s decision. The GC identified two essential characteristics of the mark, namely ‘the overall cube shape’ and ‘the black lines and the little squares on each face of the cube’. As regards the cube shape, it ruled that since the puzzle is made up of small cubes arranged in rows of 3 x 3, which have to be rotated vertically and horizontally, the shape of the product is necessarily that of a cube. As regards the grid structure, the GC held that the black lines actually represent a physical separation between the different small cubes, allowing a player to rotate each row of small cubes independently of each other in order to gather those small cubes, in the desired colour scheme, on the cube’s six faces. It concluded that such a physical separation is necessary to rotate, vertically and horizontally, the different rows of small cubes by means of a mechanism located in the centre of the cube.