THE PUZZLE OF THE RUBIK’S CUBE 3D TRADE MARK
On October 24, 2019, the EU General Court ruled that the popular RUBIK’s Cube toy puzzle does not meet the requirements for registration as a three-dimensional trade mark.
The path leading up to the decision was long and dramatic! It all started in 2006 when Simba Toys GmbH & Co. KG (“Simba Toys”), a German toy manufacturer, filed an application at the European Union Intellectual Property Office (“EUIPO”) asking for a declaration of invalidity of Rubik’s Brand Ltd.’s EU registration for the RUBIK’s Cube 3D trade mark (shown below).
Simba Toys contended that, since the RUBIK’s Cube involved a technical solution consisting of its rotating capability, it may be protected only by a patent and not as a trade mark.
The EUIPO rejected Simba Toys’ above-noted application. Simba Toys filed an action before the EU General Court seeking annulment of the EUIPO’s decision. On November 25, 2014, the EU General Court dismissed the action on the ground that the essential features of the RUBIK’s Cube toy puzzle did not perform any technical function. Simba Toys appealed to the EU Court of Justice, which, for the first time, ruled in its favour by annulling the EUIPO’s decision. It reasoned that the non-visible functional elements of the toy puzzle represented by the shape should have also been taken into consideration during an examination of whether the cube shape involves a technical solution. Further to this decision rendered by the EU Court of Justice, the EUIPO declared the registration for the RUBIK’s Cube 3D trademark as invalid. Rubik’s Brand Ltd. then challenged the EUIPO’s decision before the EU General Court, but was unsuccessful.
The EU General Court reasoned that the essential characteristics of the RUBIK’s toy cube puzzle are limited to its cube shape and the black lines and squares on each face of the cube. These were deemed necessary by the EU General Court to obtain the intended technical result. The colour differences on the faces of the cube do not, however, constitute an essential characteristic, since the trade mark as registered did not have a colour claim, and consequently, it did not suggest any colour differences. The EU General Court further opined that, while examining whether the cube shape involves a technical solution, mechanisms that are not visible in the graphic representation of the mark should also be taken into consideration to assess functionality. On this basis, the EU General Court upheld the EUIPO’s decision.
The dispute may not be over yet as Rubik’s Brand Ltd. is entitled to appeal the decision. Time will tell what happens in this dispute!
Citation: Rubik’s Brand Ltd. v. EUIPO and Simba Toys GmbH & Co. KG, judgment dated 24.10.2019 of the EU General Court in Case T-601/17