Rubik’s Cube – Image by Booyabazooka
(LUXEMBOURG) – The EU trade mark representing the shape of a Rubik’s Cube must be declared invalid, according to the Opinion of the European Court of Justice’ Advocate-General on Wednesday.
In a long-running case originally brought in 2006, Advocate General Maciej Szpunar said that the essential characteristics of the contested sign – the shape of a cube and the grid structure – are necessary to perform the technical function inherent in the product concerned.
In 1999, the European Union Intellectual Property Office (EUIPO) had registered, at the request of Seven Towns, a UK company which manages intellectual-property rights relating to the ‘Rubik’s Cube’, the cube’s shape as a three-dimensional Community trade mark in respect of ‘three-dimensional puzzles’.
In 2006, Simba Toys, a German toy-manufacturing company, applied to EUIPO to have the three-dimensional mark cancelled, in particular on the ground that it involves a technical solution consisting of a rotating capability, whereas such a solution may be protected only by patent and not as a trade mark. As EUIPO dismissed that application, Simba Toys brought an action before the General Court in which it sought annulment of EUIPO’s decision.
However, the General Court’s judgement of 25 November 2014 dismissed the action brought by Simba Toys, holding that the graphic representation of the shape of a Rubik’s Cube did not involve any technical function such as to preclude it from being protected as a trade mark, and that it could therefore be registered as an EU trade mark.
The current appeal to the Court of Justice was made by Simba Toys against that judgement.
In today’s Opinion, the Advocate General proposes that the Court of Justice annul the decision of EUIPO, saying that in accordance with the EU trade mark regulation, shapes with essential characteristics which are inherent in the generic function or functions of the goods concerned must be denied registration.
Reserving such characteristics to a single economic operator would, he points out, make it difficult for competing undertakings to give their goods a shape which would be suited for the use for which those goods are intended.
Against the public interest
The Advocate General makes clear that the scope of protection was contrary to the public interest because it made it possible for the proprietor to extend its monopoly to the characteristics of goods which perform not only the function of the shape in question but also other, similar functions.
Further information, European Court of Justice – Simba Toys v EUIPO – Simba Toys v EUIPO
