General Court solves Rubik's cube puzzle

In Seven Towns Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-293/10, June 14 2012), the General Court has confirmed that a delay by OHIM in rejecting an application cannot be relied upon to overcome objections to a Community trademark (CTM) application on absolute grounds.

On January 17 2007 Seven Towns Ltd applied for a CTM to protect the appearance of the Rubik’s cube puzzle. The application was for a colour mark per se which consisted of seven colours:

 The application also included a description of the mark as being:

“six surfaces being geometrically arranged in three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs characterised by: (i) any two adjacent surfaces having different colours and (ii) each such surface having a grid structure formed by black borders dividing the surface into nine equal segments.” 

In short, the application was an attempt to protect the appearance of the Rubik’s cube when solved.

The application was accepted for publication and was published on July 30 2007. Subsequently, the examiner informed the applicant that the nature of the mark was to be changed from a colour mark to a figurative mark owing to the description provided. The examiner pointed to OHIM’s Manual of Trademark Practice, which states that the representation of a colour mark per se must consist of a representation of the colour(s) without contour. The examiner further notified the applicant that the description did not correspond to the representation of the mark provided, which consisted of blocks of the colours and their pantone numbers, so the description was to be deleted from the application. The applicant wrote to OHIM on a number of occasions between April 2008 and September 2009 maintaining that the application should be classified as a colour mark.

After a considerable delay, by decision of November 2 2009, the examiner rejected the application on the grounds that the mark applied for did not satisfy the requirements set out in Article 4 of the Community Trademark Regulation (207/2009). The applicant appealed. The First Board of Appeal of OHIM annulled the examiner’s decision on the grounds that he had infringed essential procedural requirements, but rejected the application under Article 4 of the regulation.

The applicant appealed this decision on three grounds. It contended that the First Board of Appeal was incorrect to reject the application as too much time had passed to reopen the examination of the application or, in the alternative, the application should have been remitted to an examiner for re-examination. The applicant also argued that Article 4 of the regulation had been incorrectly applied.

The court began by examining whether the delay by OHIM in rejecting the mark after it was published prevented the First Board of Appeal from addressing the substantive issues. In doing so, the court noted that, if OHIM wishes to revoke a prior decision and reopen the examination stage, it must follow the procedure provided for in Article 80(1) and (2) of the regulation, which allows for the revocation of a decision containing a procedural error within six months from the date on which the decision was taken. In this case, there could be no dispute that the six-month period post-publication had elapsed.

The court summarised this line of argument by the applicant as seeking an acquired right to the registration - an approach which the court rejected. The nature of Article 4 of the regulation meant that, at any point, OHIM was entitled to refuse registration of the mark. The court confirmed that publication is no guarantee that a mark will not be subsequently rejected on absolute grounds.

As regards the applicant's second argument (that the First Board of Appeal should have remitted the case rather than rejecting the application), the court noted that the board was entitled to “either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution” under Article 64(1) of the regulation. The court was also of the view that the applicant had been given sufficient opportunity to make submissions to the examiner and the board in favour of the registration of its mark. Accordingly, the court rejected the applicant's arguments.

Finally, the applicant asserted that the Board of Appeal had misapplied the test in relation to Article 4 of the regulation. It argued that the description of its mark was self-contained, complete and coherent in the sense of being clear, precise and intelligible and therefore satisfied the requirements of Article 4. The court agreed with the board that it would require “a huge amount of intellectual energy and imagination” on the part of the relevant public to realise that the mark related to the appearance of a solved Rubik's cube. On this basis, the board was correct to conclude that the application did not meet the requirements of Article 4.

Accordingly, the applicant's appeal was rejected in its entirety.

The court's decision on each argument advanced by the applicant emphasised the absolute nature of Article 4 of the regulation. There was an underlying tension in this decision between the legal certainty desirable for the applicant and the legal certainty necessary for third parties through the consistency of the Community Trademark Register. Although the way in which the application at issue was dealt with by OHIM was clearly unsatisfactory, it was plainly correct that the latter prevailed.

Publication of an application is usually an indication that OHIM is satisfied that the application should not be refused on absolute grounds. However, had the court found that the publication and delay by OHIM allowed the applicant to acquire the right to have its application registered, the result would have been that a mark not entitled to be registered by virtue of Article 4 could have avoided this prohibition.  

Leigh Smith, McDermott Will & Emery UK LLP, London