The decision is due to the prohibition on 'signs which consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result' in what is now Article 7(1)(e)(ii) of the EUTM Regulation (2017/1001) although the case was decided under an earlier version of the Regulation).
The General Court's decision is the latest in this saga which began in 1996 when Rubik’s Brand Ltd's predecessor applied to register the 3-D sign below as an EUTM for ‘three-dimensional puzzles’ in class 28. The applicant did not make a colour claim, nor did it provide a description.
In 2006, Simba Toys filed an application for a declaration of invalidity of the mark, on the basis of what are now Articles 59(1)(a) and 7(1)(a)-(c) and (e) of the EUTMR. Simba Toys' application was rejected by the Cancellation Division, the Board of Appeal, and the General Court, but upheld by the CJEU in November 2016.
The CJEU set aside the General Court's decision and upheld Simba Toys’s appeal on the basis that the court had interpreted Article 7(1)(e)(ii) too narrowly. It held that not only the sign's representation, but also non-visible functional elements of the product represented by that shape, such as its rotating capability must be taken into consideration (see our blog on that decision here: Puzzle Solved: CJEU rules on Rubik's Cube).
Following the CJEU's ruling, it fell to the Board of Appeal to render a new decision taking into consideration the CJEU's findings. In June 2017, the Board concluded that the shape mark was invalid and that the registration should be cancelled. Rubik's Brand appealed to the General Court.
General Court's latest ruling
The General Court emphasised that the purpose of Article 7(1)(e)(ii) is to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product. This is because technical solutions are given time limited protections (e.g. under patent law), whereas trade mark protection can be permanent. Balancing this, the court acknowledged that trade mark protection was available for shapes that were functional to a certain extent so long as the shape was not 'exclusively' functional and 'necessary' to achieve a technical result.
The General Court went on to state that to assess this ground, it is necessary to identify the ‘essential characteristics’ of the sign. The essential characteristics may be identified either by means of a simple visual analysis or a detailed examination in which relevant criteria of assessment are taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned. A refusal under Article 7(1)(e)(ii) may apply to signs consisting of the shape of goods where the graphic representation does not reveal all the elements which are necessary for the implementation of the technical solution concerned, provided it is shown that the implementation of that technical solution cannot be effective without the essential characteristics which are visible in that graphic representation.
The General Court concluded that the above applies in the current case. The Board of Appeal was correct to have regard to the rotating capability of the vertical and horizontal lattices of the ‘Rubik’s Cube’ in its analysis of the functionality of the essential characteristics of that mark, despite it not being visible in the graphic representation of the contested mark. The court went on to highlight, as the CJEU had done that "if the prohibition … only applied to shapes the graphic representation of which reveals all the characteristics allowing a product to perform its technical function, it could easily be circumvented. It would be sufficient to omit, in the graphic representation, a characteristic without which that technical function could not be achieved, notwithstanding the fact that that function requires the presence of all the essential characteristics displayed in the sign at issue."
Shape marks are generally difficult to register and there can be inconsistencies in the way the law is applied, but it is clear that EUIPO bodies will not generally tolerate attempts to register as shape trade marks functional designs that are more appropriately protected through other IP rights, such as patents or design rights.
The Rubik's Cube shape has been puzzling courts for a number of years with the CJEU somewhat unusually overturning the lower courts' decisions back in November 2016. Whether the General Court's decision is the final answer to this puzzle remains to be seen – Rubik's Brand may yet decide to appeal to the CJEU.
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