Revisiting the General Court ruling on the Rubik’s Cube 3-D shape mark

The General Court issued its second ruling in Rubik’s Brand Ltd v EUIPO on whether the internal mechanics of a shape should be considered when determining whether that shape is necessary to obtain a technical result for the purposes of an EU trade mark registration. The case concerned the well known combination puzzle, the “Rubik’s Cube” and its associated EU trade mark for the shape of a cube in respect of three dimensional puzzles. The trade mark is represented below.

Simba Toys GmbH & Co. KG (“Simba”), a German toy manufacturer, applied to the EUIPO in 2006 for a declaration of invalidity on the basis that the rotating functions of the shape provided a technical solution and, as a result, the shape could not be protected as an EU trade mark under Article 51(1)(a) of Regulation No 40/04 (now Article 59(1)(a) of Regulation 2017/1001) (the “Regulation”) and Article 7(1)(a) to (c) and (e) of the Regulation.

The Cancellation Division of the EUIPO dismissed Simba’s application and in 2008 the toy manufacturer appealed to the Second Board of Appeal. In dismissing the appeal, the Board of Appeal referred to existing case law that the examination of a trade mark must be based on the mark as filed and not by reference to any “invisible” features. The Board of Appeal noted that the representation of the trade mark in this case consisted of “three perspectives of a 3 x 3 x 3 cube, where each square face [was] separated from neighboring faces by a black contour”. The Board of Appeal observed that the trade mark’s representation did not refer to a particular function nor did it provide any “clues” to the puzzle.

In 2009, Simba appealed to the General Court for an annulment of the Board of Appeal’s decision. The General Court rejected the appeal, confirming that the shape of the cube did not involve a technical function such that it could not benefit from trade mark protection. In particular, the General Court found that the rotating capabilities of the Rubik’s Cube shape did not form part of the shape’s characteristics but was, instead, a result of internal mechanics. The General Court held that Simba’s arguments were not based on the characteristics of the shape as presented in the trade mark registration but were based, instead, on Simba’s knowledge of the Rubik’s Cube puzzle. Specifically, the General Court explained that any consideration of the internal mechanisms of the cube would not be consistent with the requirements of objectivity and certainty towards the shape as presented.

The General Court’s decision was overturned by the CJEU in 2015. The CJEU confirmed that the Board of Appeal and the General Court had been wrong to dismiss the invisible elements of the shape in assessing whether the trade mark involved a technical solution. In particular, the CJEU observed that in most cases, an assessment of the functional characteristic of a sign cannot be carried out on the basis of its graphical representation only, and all relevant material (including non-visible mechanisms) must be analysed. The CJEU therefore determined that, the General Court had interpreted Article 7(1)(e)(ii) of the Regulation too narrowly. Following the CJEU’s judgment, the case was remitted to the EUIPO for a new decision.

The EUIPO considered the case again in 2017. Taking the view of “a reasonably discerning observer”, the EUIPO found that there were three essential characteristics related to the shape: (i) the shape of the cube; (ii) the black lines and squares on each face of the cube; and (iii) the different colours on each face of the cube. The EUIPO considered that each of those essential characteristics were necessary to obtain a technical result and facilitated the mechanism of “axially rotating, vertically and horizontally, rows of smaller cubes of different colours which are part of a large cube until the nine squares of each face of that cube show the same colour ”. The EUIPO held that since this was the purpose of the Rubik’s Cube puzzle, the trade mark had been registered in breach of Article 7(1)(e)(ii) of the Regulation. The case was once again appealed to the General Court.

The General Court held that the EUIPO had incorrectly determined that the different colours constituted an essential characteristic of the trade mark. This was because the owners of the Rubik’s Cube had never actually claimed that the different colours constituted any part of the trade mark. Moreover, the trade mark registration did not itself present the existence of different colours on each face of the cube.

The General Court held that the black lines and squares on each face of the cube “which intersect, horizontally and vertically, on each of the faces of the cube, dividing each of them into nine small cubes of equal size divided into rows of 3 x 3” provided a physical divide between the small cubes to allow consumers to rotate each row; without this function the Rubik’s Cube would simply be a solid block. The General Court reiterated that the purpose of the puzzle was to allow players to generate six different coloured faces by rotating rows of the smaller cubes. The General Court agreed with the EUIPO that it was as a result of the black lines and the squares that this purpose could be achieved. The General Court therefore held that the essential characteristic of the black lines was necessary to obtain the intended technical result of the shape. Finally, in respect of the overall shape of the cube, the General Court dismissed the applicant’s argument that alternative geometrical shapes were capable of achieving the same technical result. The General Court held that the cube shape was “inseparable on the one hand from the grid structure which consists of the black lines that intersect on each of the faces of the cube” and on the other hand from the function of the actual puzzle. The specific cube shape was therefore necessary to achieve the intended result.

Despite the fact that the different colours did not constitute an essential characteristic of the shape at issue, the two remaining characteristics were necessary to obtain the intended result of the Rubik’s Cube product for which the shape was registered. As a result, the General Court held that the shape could not be validly registered as an EU trade mark.