In its judgment in Case T-601/17, the General Court of the European Union held that the Union trademark Rubik’s Cube should not have been registered as a Union trademark because the essential characteristics of the cube are necessary to obtain the technical result, namely that of rotatability.
In 1999, the following cube shape was registered as a three-dimensional Union trademark for ‘three-dimensional puzzles’ by the Office of the European Union for Intellectual Property (EUIPO) at the request of the intellectual property rights administrator for the Rubik’s Cube:
In 2006, a German toy manufacturer applied to the EUIPO for a declaration of invalidity of the trademark on the basis, inter alia, that it contained a technical solution consisting in its rotatability and that such a solution could be protected only by a patent and not as a trademark. The application for a declaration of invalidity was rejected by the EUIPO.
The subsequent action brought by the toy manufacturer before the General Court of the European Union for annulment of the EUIPO decision was also dismissed by judgment of November 25, 2014. The court took the view that the cube shape in question did not contain a technical solution that would prevent trademark protection. Instead, the characteristic technical solution would result from the invisible mechanism inside the cube.
In the appeal proceedings, however, the judgment of the General Court of the European Union and the decision of the EUIPO were then set aside by the Court of Justice of the European Union in its judgment of November 10, 2016. It held that, in order to be registrable, non-visible elements of the product represented by that shape – such as rotatability – should also have been taken into account.
The EUIPO then cancelled the trademark registration. It found that the representation of the cube contained three essential features: the shape of the cube as a whole, the black lines and small squares on each side of the cube, and the different colours on the six sides of the cube. Each of those features is necessary to obtain a technical result and that would preclude registration under the Regulation. The technical effect is that rows of smaller cubes of different colours forming a larger cube are rotated vertically and horizontally about an axis until the nine squares on each side of that cube are the same colour.
The proprietor of the Union trademark at issue challenged that decision before the General Court of the European Union. In the decision at issue in this case, the General Court of the European Union upheld the EUIPO’s decision as regards the definition of the technical effect, with the exception of the essential nature of the different colours on the six sides of the cube:
As regards the colouring, the proprietor did not claim that it played an important role, nor did the graphic representation show clearly enough that the six sides had different colours.
However, the black lines and the shape of the cube are in themselves essential features for achieving the technical result: It is only because of the physical separation between the small cubes, represented by the black lines, that the player can turn each row of small cubes independently of the others in order to arrange them in the desired colour combination on the sides of the cube. Without this physical separation, horizontal and vertical rotation would not be possible with the help of a mechanism inside the cube, so there would only be one fixed block. The shape of the cube itself, as an essential feature, is inseparable from the lattice structure and the function of the product itself, that is to say, the fact that rows of small cubes can be rotated horizontally and vertically.
Since two features are required here as essential to achieve the result sought by the cube shape of the product represented, the mark should not have been registered as a Union trademark
General Court of the European Union
Case number: T-601/17
June 18, 2020
Attorney at Law