In its decision dated 24 October 2019 (Case T601/17, Rubik’s Brand/EUIPO – Simba Toys), the General Court of the European Union has confirmed the invalidity of the European Union’s three-dimensional trade mark “Rubik’s Cube”, which consists of the shape of the famous puzzle.

The launch of a new product generally involves heavy investments (including marketing) for companies. When success is achieved, it usually does not take long for competitors to seek to take advantage of it by marketing identical or similar products. In order to protect themselves against the risk of looting their work, companies may consider filing a three-dimensional trademark protecting the shape of the product; with the advantage that a trade mark – unlike other intellectual property rights – provides its owner with an operating monopoly strictly limited in time.

However, opting for a three-dimensional trade mark application is not always a winning choice. Indeed, the application of the specific criteria for the validity of this type of trademark is not always easy and the relevant case law – particularly European – is fluctuating.

In practice, it is not unusual for third parties – usually competitors – to challenge the validity of the trade mark once it has been registered, in the event that the title is opposed to them… with the risk that the owner’s protection strategy will be destroyed.

The company that manufactures and markets the Rubik’s Cube puzzle has recently suffered the consequences. Its trade mark which consists of a three-dimensional representation of the famous cube has just been declared invalid by a decision of the General Court of the EU after more than 10 years of proceedings.

A huge success of the 1980s, the Rubik’s Cube was registered as a European Union (EU) trade mark in 1999, with the goal, for the owner, of monopolizing the shape of the famous puzzle and thus preventing any competitor from selling a similar game. This mark consists of a three-dimensional representation of the cube to designate “three dimensional puzzles” in class 28:

 

EUTM n°162784 of 6 April 1999, duly renewed

A legal puzzle going back over 10 years!

In November 2006, Simba Toys, a German toy manufacturer and distributor wanting to sell a similar game, filed an application for a declaration of invalidity against this trade mark. Simba Toys alleged in particular that the essential characteristics of the protected sign, namely the 3D representation of the Rubik’s Cube, was associated with a technical function of the game in question. According to the intervener, the black lines on each of the faces of the cube constituted an expression of rotating capability of the smaller cubes making up the puzzle and were therefore necessary to obtain a technical result, meaning that the proper protection of the game would be by way of patent and not trade mark.

By decisions dated 14 October 2008, 1 September 2009 and 25 November 2014, the Cancellation Division, the Second Board of Appeal of the EUIPO and the Sixth Board of the General Court rejected the application for a declaration of invalidity against the trade mark.

In 2014, the General Court dismissed Simba Toy’s arguments, considering that the rotating capability of the individual elements of the cube could not result from the shape as filed, but at most from an invisible mechanism internal to the cube. According to the Court, these invisible elements of the cube should not be taken into consideration in assessing the functionality of the mark.

Not shying away from these successive failures, Simba Toys lodged an appeal before the EU Court of Justice (“ECJ”) which – by a judgment of 10 November 2016 – set aside the decisions of the EUIPO and the General Court. Contrary to the reasoning expressed by such jurisdictions in their earlier decisions, the ECJ considered that the assessment of the technical function of the trade mark should not be made taking into consideration solely the sign as registered but in a more concrete fashion, taking into consideration the relevant product itself, namely the Rubik’s Cube… which does indeed have a rotating capability.

Applying this reasoning, the EUIPO declared the “Rubik’s Cube” trade mark invalid on 19 June 2017, considering that each of the essential characteristics of the mark, namely (i) the overall cube shape, (ii) the black lines and the resulting little squares on each face of the cube and (iii) the differences in the colors on the faces of the cube, was necessary to obtain a technical result, namely the ability to rotate the cubes along an axis of the rotating rows of cubes.

Rubik’s Brand’s in turn appealed to the General Court, which was therefore obligated to again rule on the validity of the “Rubik’s Cube” trade mark. In its decision dated 24 October 2019, the Court changed tack and broadly followed the ECJ’s position of 2016 by confirming the EUIPO’s decision of 19 June 2017.

The General Court therefore declared the “Rubik’s Cube” mark invalid on the basis of article 7(1)(e)(ii) of the EU Trademark Regulation, holding that “the two characteristics of the contested mark which have been correctly identified as essential by the Board of Appeal, in the present case the overall cube shape, on the one hand, and the black lines and the little squares on each face of the cube, on the other, are necessary to obtain the intended technical result of the actual goods concerned [i.e. axially rotating, vertically and horizontally, rows of smaller cubes of different colors until the nine squares of each face of the cube show the same color]” (Cf. recitals 98 and 85 to 90).

What conclusions should be drawn from this judgment?

The General Court “validated” two of the three essential characteristics previously retained, namely (i) the overall cube shape and (ii) the black lines and the resulting little squares on each face of the cube. The third characteristic – the differences in the colors on the faces of the cube – was rejected. Echoing a consensus between the parties at the hearing, the Court acknowledged, in particular, that a ‘reasonably discerning observer’ would not necessarily conclude from an analysis of the graphic representation of the mark that colors were involved.

It should be noted that, in order to declare the mark invalid, the General Court considered as essential characteristics only those elements constituting the shape itself, that is to say the elements that are themselves three-dimensional or which define the contours of the three-dimensional shape, as opposed to any other characteristic of the contested mark.

In the Louboutin decision dated 12 June 2018 (regarding the protection of the famous red sole as a EU trade mark), the ECJ had “validated” the trade mark since it did not relate to a specific shape of sole for high heeled shoes; the description of such mark expressly indicating that the contour of the shoe was not part of the mark, but only served to highlight the position of the red color covered by the registration.

By analogy, if the inventor of the Rubik’s Cube had registered his mark in color and specified in his application that the overall cube shape and the little squares on the faces of the cube were not part of the mark but only served to highlight the position of the “iconic” colors of the Rubik’s Cube, the Court’s assessment might have been different and the mark validated.

The end of Rubik’s Cube?

In practice, this case clearly illustrates that a trade mark representing the shape of a product is still not easily enforceable against a competitor.

Even so, this is not yet the end of the Rubik’s Cube, the name and iconic color scheme of which are still protected by intellectual property law!

However, toy manufacturers should be able to sell similar puzzles, with the same shape, unless all or part of the Rubik’s Cube is also patented… Perhaps the answer might be found by carefully observing the upcoming popular games in school playgrounds?

For more details, the decision is available here