General Court: 3D shape of Rubik's Cube is valid trademark

In Simba Toys GmbH & Co KG v Office for Harmonisation in the Internal Market (Case T-450/09, November 25 2014), the General Court has upheld OHIM’s rejection of an application for invalidity of a Community trademark (No 162784) for a shape registered for "three dimensional puzzles" in Class 28 of the Nice Classification in the name of Rubik’s Brand Limited (previously owned by Seven Towns Limited):

The mark portrays three perspectives of a cube, whose surfaces are characterised by a “grid structure formed by black borders dividing the surface into nine equal square elements and arranged in a three by three grid”. No colour claims were made. The mark obviously represents the Rubik’s Cube.

Simba Toys applied for a declaration of invalidity of the mark relying on multiple absolute grounds, namely that the mark:

1. was not capable of graphical representation;

2. was devoid of any distinctive character;

3. was descriptive; and

4. consisted exclusively of (i) a shape which results from the nature of the goods themselves; (ii) a shape of goods which is necessary to obtain a technical result; and (iii) a shape which gives substantial value to the goods (respectively, Articles 7(1)(a), (b), (c) and (e) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009).

The Cancellation Division and Board of Appeal of OHIM rejected the application and Simba Toys lodged an appeal with the General Court, putting forward eight pleas in law (both procedural and substantive). 

The appeal was rejected on all counts. Of particular interest is the court’s analysis of the plea relating to the infringement of Article 7(1)(e)(ii) of the regulation (ie, Simba Toys’ allegation that the mark consists exclusively of a shape necessary to obtain a technical result). According to Simba Toys, the thick black lines creating the grid structure were “designed to separate from each other individual smaller cube elements that are moveable and, in particular, rotatable”. Simba Toys’ objection was based on the premise that there was “an essential link between an alleged rotating capability of certain elements of the cube… and the presence of the black lines on its surface”. 

The court first reviewed the guidance on the interpretation of Article 7(1)(e)(ii) found in Philips Electronics NV v Remington Consumer Products Ltd (Case C-299/99) and Lego Juris A/S v OHIM (Case C-48/09 P). In particular, the court noted that the provision:

• precludes registration of “a shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution”;

• is intended to prevent the registration only of shapes of goods which “incorporate a technical solution, and whose registration as a trademark would impede the use of that technical solution by other undertakings”; the underlying public interest is the prevention of monopolies on technical solutions or functional characteristics of a product by means of trademark registration; and

• requires the competent authority to identify the essential characteristics of the 3D sign (ie, the most important elements of the sign); once such characteristics have been identified, the competent authority must determine whether they all perform the technical function of the goods at issue.

The court identified the essential characteristics of the mark (ie, the cube itself and the grid structure appearing on each of its surfaces) and considered whether they all perform the technical function of the goods concerned. 

According to the Board of Appeal, the mark as filed gave no indication of the ‘internal’ rotating capability of the goods (ie, their function) and, therefore, Simba Toys’ reasoning was not based on a representation of the mark as filed, but on “alleged or supposed invisible features”.

The court agreed with this view and expanded on it, stating that it is possible for a cube with rotating capability not to contain visible separating lines, and that there was no essential link between the rotating functionality and the presence of the bold black lines and the grid structure. Further, the court noted that the mark had been registered for "three-dimensional puzzles", which include those with rotating capability but also those designed to be taken apart in order to be reassembled or to be transformed into other shapes. Therefore, it was wrong to assume that the cube would necessarily be perceived as having rotating elements.

The court opined that Simba Toys’ arguments were based on the knowledge of the rotating capability of the Rubik’s Cube but that capability could not result from the essential elements of the mark (ie, the black lines and the grid structure). The rotating capability is an invisible internal mechanism and, therefore, cannot constitute an essential characteristic of the mark.

Whilst it was open to the Board of Appeal to draw inferences in its analysis of the mark, the court held that those inferences “must be drawn as objectively as possible from the shape in question” and cannot be “purely speculative”. It was not sufficiently certain to infer the existence of an internal rotating mechanism from the representation of the mark.

Conversely, the court commented that inferences were legitimately drawn:

• in the Philips case, where the technical function in issue at the time (ie, shaving) was “clearly apparent” from the sign registered by Philips, depicted below:
  
• in the Lego case, where it could be logically inferred from the studs appearing on the surface of the red brick (depicted below) that “they were designed for the assembly of toy bricks and that those toy bricks contained a hollow underside and secondary projections”, even if those elements were invisible:
   

Interestingly, although the court recognised the validity of Rubik’s Brand's mark, it made it clear that its proprietor may not rely on it to prevent third parties from marketing 3D puzzles:

• with a rotating capability (which function is not protected by the registration) - the mark protects solely the shape of a cube with a grid structure giving it the appearance of a black cage;
• that have a shape different from a cube; and
• in the shape of a cube but whose surfaces do not consist of a grid structure similar to that on the contested mark or any other similar motif.

The upshot of the decision is that the technical function for the purposes of Article 7(1)(e)(ii) must be clear from the representation of the mark or, at least, must be inferred with sufficient certainty by the competent authority.

However, the dividing line between sufficiently certain and speculative inferences is unclear. The competent authority’s role is to identify a mark’s essential characteristics objectively with the specific aim of examining the functionality of the shape at issue. However, once the assessment moves away from the graphic representation and the description filed, it opens the door to subjective considerations. The assessment will not be based solely on the sign ‘as it looks’ but on what one ‘reads into’ the sign. What is the knowledge background of the objective observer ‘shaping’ the perception of the sign at issue and enabling the making of inferences? The inferences drawn in the Lego case were based on the knowledge of the existence of toy bricks generally (also including Lego bricks). Why would a notional observer of the mark not have 3D puzzles’ rotating capability in mind, even if such knowledge derived from the Rubik’s Cube itself? The court acknowledges that the examination of a sign can be supported by survey evidence and/or expert opinion. It would be interesting to know if Simba Toys gathered any survey evidence and if such evidence supports its theory of how the mark would be perceived. Would that have rendered Simba Toys’ inference sufficiently certain, even if relating to an invisible internal mechanism?

Cam Gatta, Redd Solicitors LLP, London