Rubik's Cube - twists & turns
The Court of Justice of the European Union (CJEU) has confirmed that when considering Article 7(1)(e)(ii) (that a mark consists exclusively of the shape of goods necessary to achieve a technical result) extrinsic evidence may be relevant, such as descriptions filed at the time of the application.
Simba's application for cancellation
In 1999, a 3D black and white representation reminiscent of the famous 'Rubik's Cube' was registered as a European Union Trade Mark (EUTM) in class 28 for three-dimensional puzzles (as above). Simba Toys, a German toy company, sought to invalidate the registration on the grounds that the sign should not have been accepted for registration as its shape was necessary to obtain a technical result. The European Union Intellectual Property Office (EUIPO) dismissed the invalidation action.
General Court rejects Simba's appeal
The General Court rejected Simba Toy's appeal, stating that the graphical representation applied for was not suggestive of any rotating capability, as the rotating capability results from an internal mechanism which is invisible.
The CJEU ruled that the General Court should have taken into account the non-visible functional elements, such as the rotating capability. The CJEU stated that "the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods concerned". It was not disputed that the sign consisted of the shape of actual goods (ie, a Rubik's cube) and not an abstract shape.
When assessing technical function, evidence extrinsic to the representation of the trade mark may be taken into account, such as material relevant to identifying the essential characteristics of a sign and any descriptions filed at the time of the application for registration.
This decision provides a helpful reminder of the quirks of shape marks, and the balance to be struck between the limiting scope of protection to an application as graphically represented, as against the duty to carry out a 'technical investigation' into the actual product the application is trying to cover.
Case details at a glance
Jurisdiction: European Union
Decision level: Court of Justice
Parties: Simba Toys GmbH & Co KG and Seven Towns Ltd
Citation: C?30/15 P
Date: 10 November 2016
Full decision: http://dycip.com/c-3015p