In examining whether registration ought to be refused on the ground that that shape involved a technical solution, EUIPO and the General Court should also have taken into account non-visible functional elements represented by that shape, such as its rotating capability.
At the request of Seven Towers, a UK company which manages, inter alia, intellectual property rights relating to the ‘Rubik’s Cube’, the European Union Intellectual Property Office (EUIPO) registered in 1999, as a three-dimensional EU trade mark, the cubic shape in respect of “three-dimensional puzzles”.
In 2006, Simba Toys, a German toy manufacturer, applied to EUIPO to have the three-dimensional mark cancelled on the ground, inter alia, that it involved a technical solution consisting of its rotating capability, since such a solution may be protected only by patent and not as a trade mark.
EUIPO dismissed its application and Simba Toys thereupon brought an action before the General Court in which it sought annulment of EUIPO’s decision.
By its judgment of 25 November 2014 (see Case T-450/09 Simba Toys GmbH & Co. KG v OHIM), the General Court dismissed the action brought by Simba Toys on the ground that the cubic shape in question did not involve a technical function such as to preclude it from being protected as a trade mark. In particular, the General Court took the view that the technical solution characterising the Rubik’s Cube did not result from the characteristics of that shape but, at most, from an internal and invisible mechanism of the cube.
Simba Toys appealed to the Court of Justice against the judgment of the General Court.
By today’s judgment, the Court points out that Regulation No 40/94 on the Community trade mark, which is applicable in the present case, seeks to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product. In that regard, the Court confirms that the essential characteristics of the shape at issue are the cubic form and a grid structure on each surface of that cube (see The Lego brick is not registrable as a Community trademark).
Next, with regard to the question as to whether registration of the shape in question as an EU trade mark is liable to confer on Seven Towns a monopoly on a technical solution, the Court highlights that it is necessary to examine whether that shape is necessary in order to obtain a technical result.
Contrary to what the General Court found, the Court of Justice notes that, in the context of the present examination, the essential characteristics of the cubic shape in issue must be assessed in the light of the technical function of the actual goods represented. In particular, it was for the General Court also to take into consideration non-visible elements of the graphic representation of that shape, such as the rotating capability of the individual elements in a three- dimensional “Rubik’s Cube”-type puzzle. In that context, the General Court ought to have defined the technical function of the product concerned and have taken this into account in its examination.
Moreover, the Court takes the view that the fact that Seven Towers requested registration of the contested sign for “three-dimensional puzzles” in general, without restricting itself to those that have a rotating capability, cannot preclude account from being taken of the technical function of the actual goods represented by the cubic form in question, and makes it even necessary, since the decision on that request is liable to affect all manufacturers of three-dimensional puzzles with cube–shaped elements.
In those circumstances, the Court sets aside the judgment of the General Court and annuls the EUIPO decision which confirmed registration of the shape in question as an EU trade mark. It will be a matter for EUIPO to adopt a new decision taking into account the findings set out by the Court in the present judgment.
The graphic representation of that cube does not involve a technical solution which would prevent it from being protected as a mark.
At the request of Seven Towns Ltd, a UK company which manages inter alia intellectual property rights relating to the ‘Rubik’s Cube’, the EU’s Trademark Office (OHIM) registered, in 1999, the shape of that cube in respect of “three-dimensional puzzles” as a three-dimensional Community trade mark.
In 2006, Simba Toys GmbH & Co. KG, a German toy manufacturer, applied to OHIM to have the three-dimensional mark cancelled on the ground inter alia that it involves a technical solution consisting of its rotating capability, since such a solution may be protected only by patent and not as a mark. OHIM dismissed its application and Simba Toys therefore brought an action before the General Court for annulment of OHIM’s decision.
In its Judgment in Case T-450/09, Simba Toys GmbH & Co. KG v OHIM, the General Court (Sixth Chamber) dismisses the action brought by Simba Toys.
In the first place, the Court finds that the essential characteristics of the contested mark are, first, the cube per se and, second, the grid structure which appears on each of its surfaces. According to the Court, the bold black lines which form part of that structure and which appear on the three representations of the cube by criss-crossing the inside of those representations are not suggestive of any rotating capability of the individual elements of the cube and therefore do not fulfil any technical function.
The rotating capability of the vertical and horizontal lattices of the Rubik’s Cube does not result either from the black lines or the grid structure, but from an internal mechanism of the cube which is invisible on its graphic representations. Consequently, the registration of the shape of the Rubik’s cube as a Community trade mark cannot be refused on the ground that that shape incorporates a technical function.
In the second place, the Court finds that the mark in question does not allow its proprietor to prohibit third parties from marketing all types of three-dimensional puzzles that have a rotating capability. The Court states that the proprietor’s marketing monopoly is limited to three- dimensional puzzles that have the shape of a cube the surfaces of which bear a grid structure.
In the third place, the Court finds that the cubic grid structure of the mark in question differs considerably from the representations of other three-dimensional puzzles available on the market. That structure therefore has distinctive character which enables consumers to identify the producer of the goods in respect of which the mark is registered.