The CJEU has recently set aside a
judgment of the General Court which had confirmed trade mark
protection for the Rubik's Cube. It will now for the EUIPO to reconsider whether the
three-dimensional trade mark in the shape of the Rubik's Cube
is eligible for protection. Thus, a legal conflict that has kept
trade mark practitioners on their toes for some time continues to
the next round.
What happened so far? In the 1990s, Seven Towns, a UK-based
company, successfully registered a three-dimensional EU trade mark
in respect of "three-dimensional puzzles" for
the above representation of the Rubik's Cube:
Back in 2006, Simba Toys filed a cancellation request against
this registration. The German toy manufacturer argued that the
trade mark should not have been registered as it had a technical
function within the meaning of Art. 7(1)(e)(ii) EUTMR. According to this provision, signs are
barred from registration if they consist exclusively of the shape
of goods which is necessary to obtain a technical result. Neither
the EUIPO nor the General Court found
that these requirements were met in the present case.
In the judgment under appeal, the General Court held that the
essential characteristics of the three-dimensional trade mark (the
shape of the cube and its grid structure) did not suggest a
technical function. In its view, the widely known rotating
capability of the cube's individual elements should not be read
into the trade mark. The General Court reasoned that only the
graphic representation of the trade mark as registered had to be
considered, which did not imply any technical function.
The CJEU, however, has now rejected
this approach. The General Court's reasoning contravened the
public interest underlying Art. 7(1)(e)(ii) EUTMR, namely to prevent an undertaking from
being granted a monopoly on technical solutions or functional
characteristics of a product. The CJEU
reiterated that the functionality of a trade mark ought to be
determined not only on the basis of its graphic representation but
also by considering additional information on the actual goods
concerned. This task has now been reassigned to the EUIPO.
The CJEU's position is in line with its earlier decision in
Pi-Design (see joined cases C-337/12 P – C 340/12
P). In that decision, the CJEU made it
clear that the functionality of a trade mark should be analysed by
taking into account the actual goods in relation to which the mark
was used. That being said, it seems unlikely that the present
ruling will remove all uncertainties surrounding the application of
Art. 7(1)(e)(ii) EUTMR on the grounds the
Court has arguably missed an opportunity to offer more specific
instructions as to how to assess the functionality of a trade mark.
Future discussions are likely to focus on determining the
permissible type of sources and information regarding the function
of the actual goods at issue.
Case C 30/15 P
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1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
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