CJEU Solves Rubik’s Cube Trade Mark Puzzle
Simba Toys GmbH & Co. KG v European Union Intellectual Property Office (EUIPO) (Case C‑30/15 P) (10 November 2016) (First Chamber; S. Rodin (Rapporteur), R. Silva de Lapuerta, President of the Chamber, E. Regan, J.‑C. Bonichot, A. Arabadjiev, Judges; Advocate General: M. Szpunar)
On November 10, 2016, the Court of Justice of the European Union (CJEU) decided that the Rubik’s cube shape should no longer qualify for trade mark protection, because of its inherent functionality.[1] The Court set aside a judgment of the General Court and annulled the European Union Intellectual Property Office’s (EUIPO) decision from 1999 confirming registration of the shape.[2] In 2006, Simba Toys, a German toy manufacturer, had applied to the EUIPO to have the mark cancelled because it involved a technical solution consisting of its rotating capability. They asserted that such a solution may be protected only by patent and not trade mark law. Ten years later, the CJEU finally clarified the situation and largely agreed with Simba Toys’s arguments.
The Court held that where a mark consists of the shape of the actual goods “the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods concerned.”[3] The decision stated that the General Court assessed Article 7(1)(e)(ii) of Regulation No 40/94 too narrowly and should have defined the technical function of the goods at issue, namely a three-dimensional puzzle with a rotating capability. The CJEU declared that this should then have been considered when assessing the functionality of the essential characteristics of the mark.[4]
Rights-holders will be worried about wider ramifications of the decision, which may lead to a weakening of their intellectual property protections. The decision appears to follow a recent trend of wariness at ECJ level that rights in trade mark law not become a competitive obstacle for others by granting a monopoly on technical solutions or functional characteristics of a product.[5]
This is a similar finding to a landmark case in 2010 concerning Lego Juris A/S, the Danish toy company, and its attempts to register a trade mark for its famous red toy building brick. The European Court of Justice ruled that a Lego brick “merely performs a technical function and cannot be registered as a trademark.”[6] Interestingly, the shapes of Lego figurines (as opposed to Lego blocks) have been successfully registered as European trademarks. This issue was debated before the General Court of the EU, with the applicant arguing that no trademark should exist as the shape of Lego figurines also involved a technical function.[7] In 2015, the General Court issued a decision that disagreed, upholding Lego’s 3D figurine trademark registrations. The court pointed out that there are additional features to the figurines which do not have a technical function, so on that grounds they are registrable.[8] This is where the distinction in the law appears.
The current owners of the Rubik’s cube – Rubik’s Brand – will continue to protect their most famous asset under trademark, copyright, passing off and unfair competition law.[9] Other European 3D trademark registration owners, particularly those involved in toys and games, must now also consider this functionality distinction in assessing their own IP portfolios to ensure that they are effectively protected.
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