The Rubik’s Cube shape trade mark declared invalid

In 1999 Seven Towns successfully registered the Rubik’s cube as a 3D EU trade mark. In 2006, a German toy manufacturer, Simba Toys, applied to cancel the trade mark on the basis that the mark involved a technical solution (due to its ability to rotate). The EUIPO dismissed this application and Simba Toys commenced a further action in the General Court who also dismissed the same claim.

Simba Toys commenced an appeal to the European Court of Justice (ECJ).

Seven Towns had sought registration of the Rubik’s cube trade mark for ‘three-dimensional puzzles’, without restricting itself to ‘three–dimensional puzzles’ that rotate. Therefore, the registered trade mark affected other manufacturers of 3D puzzles with a cube shape element.

The ECJ highlighted that trade mark law seeks to prevent a monopoly on technical solutions or functional characteristics of a product.

On 10 November 2016 the ECJ set aside the judgment of the General Court and annulled the EUIPO decision:

“In examining whether registration ought to be refused on the ground that that shape involved a technical solution, the EUIPO and the General Court should also have taken into account non-visible functional elements represented by that shape, such as its rotating capability”.

This decision is final and cannot be appealed.

It is notoriously difficult to register shape trade marks within the EUIPO.   Lego, were refused registration of the Lego brick on the basis that the brick consisted of two rows of studs on the upper surface, which were necessary to obtain the intended technical result, to assemble the Lego bricks, and the trade mark was not registerable.   Previously, Kit-Kat were also refused registration for the shape of their chocolate bar, on the basis that the shape (feature) to be protected resulted from the nature of the goods (to hold the chocolate bar), whilst the other features of the Kit-Kat bar were necessary to obtain a technical result.

If you have any queries regarding registering any type of trade mark (word, logo, shape, smell, sound), please contact Briffa. We will advise you on all aspects of registering your UK, EU or International trade mark.