The owners of the Rubik's Cube look set to lose the EU trade mark they hold over the 3D shape of the puzzle following a recent Advocate General (AG) opinion which confirmed that the 3D shape is not eligible for trade mark protection. A copy of the trade mark (Mark) can be seen here.
The Advocate General provides a legal opinion on a matter before it is considered by the Court of Justice of the European Union (CJEU). Although the CJEU is not bound by such an opinion it is normally followed therefore is indicative that the trade mark will now be cancelled.
The Rubik's Cube was invented in the 1970's and was subsequently protected by way of a patent. When the patent expired its owners successfully applied for the shape of the puzzle to be protected as a three dimensional EU trade mark. Several years later a German toy company, Simba Toys, applied to have the trade mark cancelled on the grounds contained within Article 7 (1)(e)(ii) of the EU Trade Mark Regulation. This Article provides that signs are not eligible for trade mark protection if they are purely functional and the shape is necessary to obtain a technical result.
The cancellation request was rejected by the EUIPO, a decision which was upheld by the General Court. The request was rejected on the basis that the essential characteristics of the sign did not imply any technical solution and no consideration should be given to the well-known rotating capability of the puzzle, rather the assessment should be based on the examination of the mark as filed.
However, the opinion of the AG suggests that Simba should be optimistic that their cancellation request will be successful. The AG held that the reasoning of the General Court was not in line with the public interest of keeping in the public domain the essential characteristics of particular goods which are reflected in their shape. It is this public interest that informs the provisions of Article 7 and restricting an assessment of the functionality of a mark to its graphic representation might undermine this public interest.
The AG also held that the well-known features of the Rubik's Cube confirmed the functionality of the mark, as beyond its functional characteristics it contained no arbitrary or decorative characteristics.
It will be interesting to see if the CJEU follows the AG's opinion and cancels the mark. Whatever the CJEU does decide it should provide definitive guidance on the factors to be taken into account when considering the function of a trade mark under Article 7.
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