Rubik's cube: technical result or distinctive sign?

The external appearance of products is becoming an increasingly determining aspect when making a purchasing decision by consumers. Therefore, the attempt to register three-dimensional marks It is a frequent practice in order to protect a certain form that is sufficiently influential in this decision-making.

On the other hand, the protection of this type of trademarks that consist of the shape of a product or its presentation without any other type of addition has always been a controversial issue. The problem that arises when granting three-dimensional trademarks is that of seeking a balance between granting an exclusive right to the owners of these trademarks and trying to avoid a monopoly on the marketing of a certain product.

Thus, from the prohibition of registration contained in art. 7.1 section e) EMR it follows that The three-dimensional mark cannot and should not be a protection system for technical results.. For this purpose, there are other more appropriate legal instruments, such as patents or utility models, whose temporal limitation is essential for the functioning of the invention protection system.

In effect, this prohibition seeks to delimit the trademark and patent systems, preventing the granting of an exclusive right unlimited in time over a technically necessary form, since this would mean perpetuating a monopoly over a technical solution.

However, sometimes it's not easy delimit which representations have a purpose consisting of protecting those signs that identify the business origin of a product, and not its technical specifications.

This issue is addressed by the “Rubik's Cube” case, which has reached the Court of Justice of the European Union.

In 1999, the British company Seven Towns Ltd obtained the three-dimensional European Union trademark registration no. 162784 consisting of the shape of the Rubik's cube to distinguish in class 28 “Three-dimensional puzzles”: 

 

In 2006, the toy producer Simba Toys GmbH & Co. KG filed an application for invalidity of this trademark. The EUIPO rejected its request, so Simba Toys filed an appeal before the General Court in order to obtain the annulment of this resolution.

The Appeal was fundamentally based on the argument that the trademark incorporates a technical result consisting of the rotation capacity of the product itself, therefore incurring the absolute prohibition mentioned above.

The General Court, confirming the decision of the EUIPO to maintain the register, handed down a ruling (case T-450 / 09) on November 25, 2014, dismissing the appeal and considering the following:

In summary, The General Court considers that the protected representation has distinctive features (the black lines and the grid structure it presents) that go beyond the internal mechanism of the cube, which cannot be perceived in the graphic representations of the sign. Given this decision, Simba Toys decided to appeal (C-30/15 P).

A few days ago, The Advocate General has presented his conclusions (not available in Spanish) in which he affirms that the TG erred al
consider that “The graphic representations of the contested mark do not allow us to know whether the contested shape has a technical function or, if so, what it could be (...) it does not follow with sufficient certainty from these representations that the cube in question is composed of mobile elements and unless said elements can be subject to rotation movements”. He maintains that, although the TG identified the essential characteristics of the represented shape, it did not stop to analyze the relationship between these and the technical function of the product.

Contrary to what the TG stated in its ruling, The Advocate General considers that the squared structure of the cube does not exactly constitute a decorative and imaginative element, but this structure divides the individual elements of which the puzzle is composed, thus allowing its rotation. Stresses that when carrying out the analysis of the functional elements of a shape, the competent authority is not obliged to limit itself only to the information resulting from the graphical representation, but, if necessary, must also take into account other information relevant. This is why it is considered that the sign is constituted by the shape of a product that only expresses a technical function, without adding significant non-functional elements, this shape being necessary to allow the rotation (technical result) of the individual elements from which it is derived. composes the product in question (the puzzle).

Let us remember that the basis of the prohibition contained in art. 7.1 section e) EMR, relating to the forms imposed by the very nature of the designated product, seeks to prevent the acquisition of a temporarily unlimited monopoly over a category through trademark law.
of products. The purpose lies in protecting a competitive market, by preventing possible attempts at appropriation of the shape of a product that, by its very nature, must necessarily present that shape.

The Advocate General concludes by arguing that, As it does not contain arbitrary or decorative elements, the shape of the Rubik's cube cannot be registered as a trademark., since said registration significantly limits the freedom of other economic operators to introduce into the market other products characterized by the same or similar technical result, that is, that of a three-dimensional puzzle or puzzle that consists of logically ordering elements that can move in space.

Furthermore, it points out that the trademark owner did not add in its registration application a description of how the puzzle works, which allows the scope of protection of the trademark to be broader and cover all types of puzzles with a similar regardless of its mode of operation, making it possible for the owner to extend its monopoly to the characteristics of products that not only meet the function of the form
controversial, but also other similar functions.

We will now have to wait a few months for the final decision of the Court of Justice before being able to confirm whether the Rubik's Cube continues to be registered as a trademark or not.

NB For a comment on the final ruling you can go to here