The EUIPO Board of Appeal invalidates the Rubik's Cube 3D trademark
By a decision dated 20 October 2023, the EUIPO First Board of Appeal (BoA) dismissed the appeal brought against the declaration of invalidity of the Rubik’s cube’s three-dimensional colour trademark, filed for games in class 28 (R 850-2022-1). In agreement with the Cancellation Division, the BoA in fact considered that the contested trademark was registered in breach of Art. 7(1)(e)(ii) of EU Regulation no. 207/2009 as it consists exclusively of a shape that is necessary in order to obtain a technical result.
With regards to the decision in question, the BoA first recalls that the general interest underlying Art. 7 is to prevent trademark law from giving a company a monopoly on technical solutions or functional characteristics of a product, thus indefinitely perpetuating the exclusive rights relating to technical solutions which must, instead, be protected within the time limits of patents (twenty years).
The BoA then identifies three essential characteristics of the shape of the mark in question, to be evaluated in light of the technical function of the product:
i) a cube shape;
ii) a black grid on each side of the cube formed by squares arranged in rows of 3x3;
iii) six different colours of the squares on each side of the cube respectively, namely red, green, blue, orange, yellow and white.
In this regard, the BoA recalls previous decisions of the EUIPO (R-472/2017-1) and the EU General Court (T-601/17) which had in turn dealt with applications for the registration of shapes corresponding to the Rubik's cube. In accordance with these decisions, the BoA concludes that the cube shape and the grid structure are indeed necessary to obtain a technical result, namely “that of a game which consists of completing a cube-shaped three-dimensional colour puzzle by generating six differently coloured faces. This purpose is achieved by axially rotating, vertically and horizontally, rows of smaller cubes of different colours until the nine squares of each face of the cube show the same colour”.
The BoA therefore focuses on whether the third essential characteristic mentioned above, i.e. the colours of the squares, is also necessary to achieve a technical result. Based on a reasoning that does not stand out for clarity, and always recalling the previous decisions mentioned above, the BoA concludes that even these colours would be necessary to obtain a technical result, given that "the cube would not work as a puzzle if all six of its faces had the same colour". The EUTM owner's defence that the specific colour combination is distinctive and arbitrary was of no avail, as the BoA countered that:
i) when discussing a shape that cannot be registered because it is necessary in order to obtain a technical result, it is irrelevant that this shape is distinctive;
ii) the existence of alternative shapes, suitable for obtaining the same technical result, does not in itself exclude that a shape is not registrable pursuant to Art. 7(1)(e)(ii). Consequently, the fact that the same technical result of the Rubik's cube can be obtained with other colours, patterns, symbols or letters would be irrelevant in assessing the functional character of the colours in question;
iii) the actual choice of colours was dictated by the need to have colours that were sufficiently different from each other. The colour combination of red, green, blue, orange, yellow and white meets this criterion, hence it would be necessary in order to obtain the technical result of the Rubik's cube.
In conclusion, as anticipated, the contested trademark was deemed not to satisfy the requirements of Article 7(1)(e)(ii) of EU Regulation no. 207/2009 for all the products for which it was registered (games, playthings, three-dimensional toys and puzzles; electronic games; pocket electronic games).
