Rubik’s Cubes: In a spin (Brands & IP Newsnotes - issue 4)

As we have covered in various previous Newsnotes, it has become increasingly difficult to register shapes as trade marks, or, as in this case, to keep them registered.

The issue with shape marks is that consumers generally distinguish between brands on the basis of product names, logos, and sometimes colours, rather than shape. Importantly, shapes cannot be registered as trade marks where the shape results from the “nature of the goods themselves”, where they add “substantial value”, or where the shape is “necessary to obtain a technical result”.

In this case, a producer of toys, including one very similar to the Rubik’s Cube (Simba) sought to cancel the registration for the Rubik’s Cube on the basis that the shape  registered was necessary to obtain a technical result, i.e. to produce the 3D puzzle. The application to cancel the mark was unsuccessful at the EUIPO and again on appeal to the General Court.

But Simba persevered taking the case to the CJEU which agreed that the mark is invalid, deciding that it consists exclusively of a shape required to obtain a technical result. The CJEU found that while one might not be able to tell from the representation of the shape what the ‘technical result’ is, the examiner should go further and take into account evidence beyond the application or registration itself to work out what the product depicted is or does.

The most obvious impact of this decision (and other similar ones) will be felt in the puzzles and toys industry, as it will be more difficult for inventors of puzzles and toys to prevent copycats by registering trade marks. Those looking to protect shapes (especially where those shapes are part of the function of a product) should, where possible, consider protecting the product with a patent or registered design instead.

This article was first published in the Brands & IP newsnotes publication - issue 4