Earlier this year, we reported on the opinion of AG Szpunar on the validity of an EU trade mark registration for the shape of the Rubik's Cube (see here). On 10 November 2016, the CJEU made its decision on the case. The full text of the decision can be found here and an image of the shape mark, as it appears on the EUIPO's register, is shown below:
The issue considered by the CJEU is whether the Rubik's Cube shape is caught by Article 7(1)(e)(ii) of Council Regulation No 40/94 which provides that "signs which consist exclusively of the shape of goods which is necessary to obtain a technical result" shall not be registered.
In the CJEU's view, where the sign in question consists of the shape of the actual goods claimed, a correct analysis of Article 7(1)(e)(ii) requires an assessment of the essential characteristics of the shape in light of the technical function of the actual goods concerned. This includes consideration of the essential characteristics of the Rubik's Cube shape: namely its cubic form and the grid pattern on each surface. However, it also includes looking at functional elements of the actual goods that are not necessarily apparent from the graphical representation of the sign or any description of it filed with the original application for registration. In the case of the Rubik's Cube puzzle, the fact that each face of the cube can be rotated. Bearing in mind that the goods claimed are "three-dimensional puzzles", the CJEU found that the General Court erred by not considering the rotating capability of "Rubik's Cube"-style products in its assessment of Article 7(1)(e)(ii). Such capability is not visible from the graphical representation of the Rubik's Cube shape but is known to be typical of certain "three-dimensional puzzles".
The CJEU went on to discuss "three-dimensional puzzles" in a broader sense. It held that the fact that registration was claimed for "three-dimensional puzzles" generally (without being restricted to those with a rotating capability) cannot preclude account from being taken of the technical function of such products. To hold otherwise would allow the trade mark proprietor to claim protection for all types of puzzles with a similar shape, irrespective of the principles by which it functions.
Against this background, the CJEU has set aside the judgment of the General Court and annulled the EUIPO decisions which confirmed registration of the Rubik's Cube shape as a valid EU trade mark. The EUIPO will now re-consider whether the Rubik's Cube shape is validly registered. Taking into account CJEU's decision, it is likely to be declared invalid.
The Court's approach, which indicates that a court or tribunal must consider external factors that are not intrinsic to the mark as registered, is controversial and sure to be the subject of further high profile cases. However, it does have antecedents in cases such as the Specsavers case where it was found that the colour in which the figurative mark was used was relevant in determining the scope of infringement despite the fact that the registration itself was in black and white. It is very also unusual to see the CJEU overturning all the lower instance decisions and it will be interesting to see whether this signals a more interventionist approach from the CJEU in addressing appeals from the EUIPO and General Court.