Out-Law News 2 min. read

Rubik's Cube trade mark ruling: 'the functionality of the essential characteristics' of shapes must be assessed, says EU court


The way central features of three-dimensional products function must be taken into account when determining whether the shape of those goods is eligible for trade mark protection, the EU's highest court has said.

The Court of Justice of the EU (CJEU) made the point in a ruling which revoked trade mark protection for the shape of the Rubik's Cube puzzle.

The CJEU said the Rubik's Cube shape was not eligible for trade mark protection as the shape performed a "technical function". The decision reversed an earlier judgment of the EU's General Court and a determination made by the EU Intellectual Property Office (EUIPO).

EU trade mark law recognises that shapes or other signs capable of being represented graphically can qualify for trade mark protection if they are capable of distinguishing one company's goods or services from those of its rivals. However, if a mark's shape is borne out of the nature of the product that it is, or takes on a form that is necessary to obtain a technical result, then applications for registering those marks as trade marks must be rejected.

In its ruling the CJEU said both the General Court and EUIPO had failed to take into account the fact that parts of the Rubik's Cube can be rotated when reaching their decisions.

Although that "rotating capability" stemmed from an invisible internal mechanism within the Rubik's Cube, it was nevertheless a feature of its shape that made up part of its "essential characteristics", the Court said. As a result, the functionality of that feature had to be assessed to determine whether or not the shape performed a technical function, it said.

This approach is necessary to ensure that businesses cannot obtain a monopoly on "technical solutions or functional characteristics of a product" based solely on the "graphic representation" of that product's shape, the CJEU said.

The CJEU said: "In order to analyse the functionality of a sign for the purposes of [EU trade mark law], which concerns only signs which consist of the shape of the actual goods, 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," it said.

"While it was necessary … for the purpose of that analysis, to proceed on the basis of the shape at issue, as represented graphically, that analysis could not be made without taking into consideration, where appropriate, the additional elements relating to the function of the actual goods at issue," the CJEU said.

Intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said: "This decision follows a line of recent cases which have restricted a rights holder’s ability to protect ‘non-conventional’ trade marks like 3-D shapes."

"While there are some inconsistencies in these judgments, underpinning them is the unspoken policy consideration that 3-D objects should be protected either through the patent system, or more likely, the registered design regime," Connor said. "While patents offer protection for 20 years and registered designs, 25 years, this is nothing when compared to the potentially infinite protection offered by trade marks. Therefore, notwithstanding this judgment, we can expect more trade mark applications from rights holders who want to secure monopoly rights which extend their exclusive protection beyond the terms offered by other intellectual property rights."

We are processing your request. \n Thank you for your patience. An error occurred. This could be due to inactivity on the page - please try again.