To 3D, or not to 3D, that is the question: Another twist in the Rubik’s Cube and its EU trade mark protection

The long running and highly publicised Rubik’s cube case has taken another twist. On 24 October 2019, the EU General Court confirmed the cancellation of the EU trade mark for the 3D shape. The mark was cancelled because its essential characteristics were deemed necessary for its technical function (i.e. the shape’s ability to rotate).

This case marks another recent loss in the protection of 3D marks covering unusual or distinctive shapes. Although the reasons for rejection vary, it is clear that registering and retaining a 3D mark can pose significant obstacles for brand owners and strategies must be considered carefully.

Key examples of 3D mark failures in the EU include the shock ruling that Lindt’s signature gold chocolate bunny was devoid of any distinctive character and the decision that KitKat’s four-finger chocolate bar was not capable of being a trade mark. The most recent of these examples is the UKIPO’s rejection of Jaguar Land Rover’s 6 3D car shapes for lack of distinctiveness.

The Rubik’s cube

The Rubik’s cube is a globally recognised product, distinctive in many ways and as such there is a possibility for trade mark protection. However, the General Court found that as its design and shape were necessary for it to function as a 3D puzzle it could not be protected as a trade mark.

Procedural history

This case began in 2006 when Simba Toys, a German toy manufacturer, filed for a declaration of invalidity of the Rubik’s cube stating that as it involved a technical solution the cube should have been protected by a patent and not by a trade mark. When the EUIPO dismissed the action, Simba sought an annulment of its decision from the General Court, which, in November 2014, was also dismissed on the grounds that the technical solution did not characterise the shape but the internal invisible mechanism.

Simba appealed to the Court of Justice, which annulled the EUIPO’s decision on the basis that the office should have considered the non-visible technical elements in its assessment. On the basis of the Court of Justice’s reasoning, the EUIPO then issued a new decision cancelling the 3D mark’s registration.

Rubik’s brand Ltd challenged this latest EUIPO decision before the General Court.

The General Court’s Reasoning

The judgment deals with each of the four pleas in law made by Rubik’s Brand Ltd, the current owner of the mark, and dismisses each in turn. Key aspects of the General Court’s decision include that:

• The essential characteristics of the Rubik’s cube (as depicted) are limited to its cube shape and the black lines and squares on each face. These were deemed necessary to obtain the intended technical result;
• Mechanisms that are not visible in the graphic representation can legitimately be taken into account when assessing functionality; and
• The EUIPO’s consideration of the colour differences on the faces of the cube was an error in law as the trade mark as registered did not suggest different colours.

Key takeaways

• Registration of the 3D mark should only be sought if the mark’s essential characteristics go further than its technical function.
• When applying for a 3D mark careful selection of the representations to be filed must be undertaken to ensure adequate protection balanced against the requirement to not disclose or focus on purely technical aspects of the product.
• Reliance on other IP rights in order to protect a 3D product bolster the protection (beyond that which can be afforded by a 3D trade mark registration), such as using 2D trade marks, copyright, passing off and unfair competition protection.
• Patent protection should be considered (where possible from a novelty perspective) if a 3D product’s technical function is an essential function.
• Brand owners may consider a review of currently registered 3D marks to establish whether they may be liable to be cancelled on the basis of their essential characteristics and whether other protections should be sought.

To read the Court Decision, click here.

By Simon Casinader and Georgina Rigg