The European Court of Justice on the protectability of the Rubik’s Cube as a trademark

On 10 November, the European Court of Justice (ECJ) ruled on the possibility of registering the shape of the famous Rubik’s Cube as a trademark (C-30/15 P).

The trademark was registered at Community level in 1996 upon application by the holder of the relevant IP rights, Seven Towns Ltd. In 2006, however, a competitor acted to have it declared invalid, arguing that it fell within the prohibition to register as a trademark “the shape of goods which is necessary to obtain a technical result“, established by art. 7(1)(e)(ii) of the then-applicable EC Regulation no. 40/94 (now EU Regulation no. 207/2009). The application for invalidity was, however, rejected by the European Union Intellectual Property Office (EUIPO) Invalidity Division and, on appeal, by the EUIPO Board of Appeal, and by the EU General Court (GC) at the outcome of further appeal. Nevertheless, the ECJ came to different conclusions.

In the decision under review, the Court found that the GC committed an error in law when it held that the essential characteristics of the mark (aka the black lines and, more generally, the grid structure that appears on each surface of the cube) did not perform a technical function and therefore did not make the trademark invalid. In particular, according to the ECJ, the mistake was in not having considered among those essential characteristics the rotating capability of the vertical and horizontal lattices of the Rubik’s Cube, which the GC and the EUIPO Board of Appeal decided not to take into consideration as it was determined by an invisible internal mechanism which could not be objectively drawn from the graphical representation of the cube shape.

Disregarding these conclusions, in the decision in question the Court stated that, for the purposes of art. 7(1)(e)(ii), “the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods concerned. Thus, and since it is not disputed that the sign at issue consists of the shape of actual goods and not of an abstract shape, the General Court should have defined the technical function of the actual goods at issue, namely a three-dimensional puzzle, and it should have taken this into account when assessing the functionality of the essential characteristics of that sign”.

Given this conclusion, certainly not taken for granted, and much less appreciated by owners of registered trademarks, the Court annulled the decisions of the GC and of the Board of Appeal. The issue will now return to the EUIPO.