Will Rubik’s Cube share the fate of LEGO blocks?

More than 40 years have passed since Ernő Rubik created his magical cube (hun. bűvös kocka) in 1974. Within that time, many techniques and ways of solving the cube have been developed, whereby competitors break speed records solving the cube, with speedcubing (speedsolving) enjoying unflagging popularity.

Registering the shape

From a legal point of view, the last 17 years have been an interesting time for the fans of Rubik’s Cube. Since the British company – Seven Towns – registered the shape of this three-dimensional cube as a trade mark on 6 April 1999, the legal fate of this puzzle has led along a bumpy, winding, mountainous road…

In 2006, the German company Simba Toys filed an application in the European Union Intellectual Property Office („EUIPO”) for annulling the right to the three-dimensional trade mark of Rubik’s Cube. The company explained that such a trade mark should be registered as a patent, not a trade mark which indicates a technical solution enabling rotation.

The EUIPO dismissed Simba Toy’s application. Thus, Simba Toys filed a complaint with the Court.

On 25 November 2014, the Court, in Case T-450/09, dismissed Simba Toy’s complaint. It concluded that graphic representations of the cube are not suggestive of any particular function which would jeopardize protecting the cube as a trade mark. Also, registration as a trade mark of a shape of a product that is purely functional in nature may enable the rights holder to ban other companies from using not only that shape but also similar shapes.

Simba Toys lodged an appeal from that judgment to the Court of Justice. However, based on the opinion dated 25 May 2016 of the Advocate General of the Court of Justice, prof. dr hab. Maciej Szpunar of the Silesian University, the Court of Justice should annul the judgment of the Court and declare the invalidity of the EUIPO’s decision. Though opinions of Advocate Generals are not binding for the judges of the Court of Justice, their conclusions often coincide with the conclusions in the final judgment of the Court of Justice. Will the Court of Justice share the Advocate General’s position?

Opinion of the Advocate General of the Court of Justice in Case C-30/15P

The issue outlined above appears in light of the interpretation of Art. 7 section 1 letter e) of Regulation No 207/2009(7), which governs the absolute grounds for refusal of a trade mark registration:

 „Art. 7 section 1.      The following shall not be registered:

[…]

1. e)      signs which consist exclusively of:

 (i)      the shape which results from the nature of the goods themselves;

(ii)      the shape of goods which is necessary to obtain a technical result; 

[…]”.

As indicated by the Advocate General, a sign representing the shape of a product which performs solely a technical function and does not include significant non-functional elements – in accordance with Art. 7 section 1 letter e) – cannot be registered as a trade mark, since such registration would unduly impair the opportunity for competitors to place on the market goods where the shapes of which incorporate the same technical solution.

However, based on the above graphic representations, can it be concluded that the image shows the functionality of Rubik’s Cube? The graphic representation presented above does not give a final and clear answer.

The Advocate General takes the view, when analyzing the functional elements, a competent authority is not required to restrict itself to information arising from the graphic representation. In other words, Art. 7 section 1 letter e) sub-item (ii) of Regulation No 207/2009 should be applied in such a way as not to restrict oneself to analyzing only the disputable three-dimensional shape visible on paper, but also to look at additional circumstances “which an objective observer cannot »strictly understand« »based on graphic representations of the disputed trade mark«”.

Going further, the General Advocate is of the opinion that a grid structure is not a decorative and fancy element, but involves an immanent functional feature, since it separates movable elements of Rubik’s Cube so that they can be rotated.

What will happen to the cube?

It is highly probable that the Court of Justice – even for the sake of introducing a clear ruling practice – will follow the analogous case of LEGO blocks, where it upheld its position determined by the Court of First Instance of the European Communities, indicating the key features of the LEGO block involve a technical function, which excludes it from the protection provided for trade marks (C-48/09 P).

Will Rubik’s Cube share the fate of LEGO blocks? We can’t answer this today. We can, however, be sure that in both cases it will not be the end of court battles related to intellectual property.