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Rubik's Cube and the 3D trade mark

The loss of a monopoly conferred by a 3D trade mark right

18 July 2019

For companies, the trade mark is an essential element that allows them to stand out from competitors and helps consumers immediately identify a product.

Technically it is still possible, both under French and European law, to protect the shape of a product or its packaging design through the registration of a 3D (three-dimensional) trade mark.

These signs benefit from legal protection in French law under Article 711-1 of the Intellectual Property Code as well as under EU law under European Union Trade Mark Regulation (EC) No 207/2009 of 26 February 2009 (the "EUTMR").

However, the number of disputes relating to the validity of 3D marks continues to increase.

In a recent decision of 10 November 2016, the Court of Justice of the European Union (the "CJEU") ruled on the case of Rubik's Cube, and the protection of its famous shape.

The Rubik's Cube case has affected the assessment of 3D marks. The CJEU has established the principle that a shape must be considered not just on its graphic representation, but rather as a whole. As in this case the Rubik's Cube's shape is exclusively necessary for a technical result, it cannot be protected by trade mark law.

The difficulty with 3D marks

As often reminded by the CJEU, the exclusive and permanent right conferred by a trade mark cannot be used to perpetuate rights the European legislator intended to be limited in time.

Thus, in its judgment of 10 November 2016 (C-30/15, Simba Toys GmbH & Co. KG / Seven Towns Ltd) the CJEU annulled the protection of the Rubik's Cube as a 3D mark.

The European trade mark for the Rubik's Cube was first registered in 1999 for 3D puzzles at the European Union Intellectual Property Office.

In 2006, an application for annulment of that 3D mark was lodged by the German toy manufacturer Simba Toys on the grounds that the cube rotating capability should be protected by a patent, not a registered trade mark.

The General Court of the European Union rejected the appeal, holding that the shape of the cube had no technical function which would prevent its protection under trade mark law. 

The Court based its decision on the graphic representation of the cube reproduced on the trade mark, which did not represent the system of rotation.

The General Court considered that the grounds for invalidity of a 3D mark had to rely exclusively on an analysis of the representation of the trade mark as it was filed and not of alleged or supposed characteristics.

An appeal was then lodged against this decision. 

In a judgment, dated 10 November 2016, the CJEU annulled the protection of the Rubik's Cube under trade mark law.

The CJEU based its decision on Article 7 of the Community Trade Mark Regulation (EC) No 40-94 of 20 December 1993 (the "CTMR"). Due to the timeframe of the facts, the CTMR was applicable despite this being repealed and replaced by EUTMR in 2009. The CJEU therefore looked at the grounds for the refusal of the registration of a 3D mark in the CTMR. 

Article 7(1)(e) CTMR sets out the "absolute grounds for refusal":

1. The following shall not be registered:

(e) signs which consist exclusively of:

  (i) the shape which results from the nature of the goods themselves; or

  (ii) the shape of goods which is necessary to obtain a technical result; or

  (iii) the shape which gives substantial value to the goods;"

 

This case was particularly concerned with Article 7(1)(e)(ii) given the crux of the matter was whether the sign in question consisted exclusively of a shape necessary to obtain a technical result or not.

In this case, according to Advocate General Szpunar, the essential characteristics of the contested sign were (i) the shape of a cube, and (ii) the grid structure dividing vertical and horizontal columns of symmetrical elements which constitute the moving parts of the puzzle. These characteristics were necessary for the technical function of the product.

The presence of a "technical result"

The presence of a technical result prevents protection by trade mark law. Consequently, the invention must instead be protected by a patent. 

Trade marks give intellectual property owners an exclusive and perpetual right to their designs, logos and words as long as they use them and renew their rights. Alternatively, the exclusivity of patents is limited in time.

Conferring protection under trade mark law to technicality in effect confers an absolute monopoly on the right-holder, which affects free competition.

From now on, the CJEU wants to put an end to the numerous cases of abusive registration of 3D marks, in particular when a technical monopoly is at stake. (See CJEU C-299/99, 18 June 2002, Koninklijke Philips Electronics NV / Remington Consumer Products Ltd, confirmed by  CJEU C-48/09,  14 September 2010, Lego Juris A/S /OHMI). The Court believes that the existence of alternatives to a shape does not allow the latter to escape the exclusion of "exclusively functional" trade marks. 

Thus, in the Philips judgment regarding a razor head, the Court held that the sign should be excluded "even if the technical result at issue can be attained by other shapes".

Moreover, the Rubk's Cube judgment confirms the view that the technical representation of a trade mark cannot on its own make it possible to understand the technical function of the product which it intends to cover. 

For that reason it is necessary to take into account more than just the mere graphic representation of the sign, but also "additional elements relating to the function of the specific product in question".

While not lost completely, the protection of a shape as a 3D mark can be seen as greatly limited. This limitation is justified by the unlimited nature of trade mark protection.

Firms that have products which may no longer be protected through registered trade marks will have to consider other avenues when alleging infringement, including through passing off or unfair competition.