By: Dr. Ulrike Grübler (Hamburg, Germany)

The European Court of Justice (ECJ) has denied trademark protection for an existing EU registration of the famous puzzle known as Rubik’s Cube. Following a decision issued by the European Court of Justice (ECJ) on 10 November 2016, the judges annulled prior decisions of EUIPO and the General Court that had confirmed the registration of the 3D trademark. The judges held that the trademark involved a technical solution and that not only visible but also invisible functional elements have to be taken into account (Judgement of 10 November 2016, C-30/15 P).

The cube was invented in 1974 by the Hungarian sculptor and architect Ernő Rubik and is made up of turning miniature cubes. More than 350 million cubes are said to have been sold worldwide until today. The EU 3D trademark (No. 162784) had been applied for in 1996 and was registered in 1999 for three dimensional puzzles in Class 28. The trademark contains the above graphic representation in black and white.

In 2006, a German toy manufacturer sought to have the trademark declared invalid. The application was based on several absolute grounds, including that the trademark consisted of a shape which results from the goods themselves and is therefore necessary to obtain a technical result.

OHIM (now EUIPO) rejected the application and the General Court upheld the rejection on 25 November 2014. The General Court stated that the mark gave no indication of the internal rotating capability of the goods as claimed by the applicant of the invalidation request. The application was therefore based on alleged or supposed invisible features whereas the presence of bold black lines and the grid structure in the representation of the trademark gives no indication as to function.

This view was challenged and the Advocate General took a different view when stating that the grid structure of the cube does not constitute a decorative and imaginative element but performs a technical function. He stated that it divides the movable elements of the puzzle and enables their rotation. As the shape at issue represents a three-dimensional puzzle the function of the goods have to be considered. The ECJ followed the view of the Advocate General and argued in its rather short decision that the non-visible functional elements represented by that shape such as the rotating capability of the individual elements in a three-dimensional puzzle have to be taken into account. In addition, the ECJ held that the fact that the registration had not been restricted to three-dimensional puzzles with a rotating capability cannot preclude account from being taken of the technical function of the actual goods represented by the cubic form in question.

The case will now return to EUIPO where the Office will have to reconsider the matter on basis of the findings set out by the Court in the present judgment. The trademark owner claims to be able to rely on further IP rights that secure its legal position. However, the decision will be disappointing and its findings appear surprising, in particular since there are similar puzzles that do not have any rotating mechanism. The case is the latest in a series of attempts to secure trademark protection for unusual and distinctive shapes that ended up at the ECJ. Additional protection via copyrights, registered designs, unfair competition and other kinds of trademarks appears once more a reasonable investment to secure valuable products against the shifting trends in the registration and maintenance of 3D trademarks on the EU level.