The community trade mark representing the shape of the multi-coloured three-dimensional Rubik’s cube has been determined to be invalid, with the European Court of Justice (ECJ) stating in it’s decision made on 10 November 2016 that the shape of the cube alone was not enough to protect it from being copied. The decision was a result of Simba Toys Gmbh & Co KG challenging the EU trade mark back in 2006, with the original trade mark having been filed in April 1996 in Class 28: ‘Three Dimensional Puzzles’.
Simba Toys claimed that the community trade mark protecting the 3D shape of the Rubik’s cube infringed Article 7(1) (e)(ii) of Regulation 40/94, which sets out a number of grounds for refusal of a trade mark application, including:
“Signs which consist exclusively of the shape of goods which are necessary to obtain a technical result”.
The ECJ found that the grid structure on the Rubik’s cube did not perform a technical function on its own, as the purpose behind the shape of the Rubik’s cube was to obtain the technical result intended.
Although the ECJ’s decision has lessened the protection available to the Rubik’s cube, which is one of the highest selling toys of all time, the Rubik’s cube does still have a number of other intellectual property rights to rely on, including other trade mark, copyright, passing off and unfair competition protection. Additionally, it is possible for the 3D shape to be protected under patent law, although, unlike trade marks, patents can only protect inventions for a limited amount of time.
The main concern with the ECJ’s decision is the ramifications it may have on companies, especially those in the field of toys and games, who want to create strong innovative brands within the EU. This is not the first case of its kind, KitKat failed to convince the ECJ that its four-fingered version of the chocolate bar should be protected by a trade mark in 2015 and Lego faced a similar decision in 2010. These decisions all indicate that in the future companies trying to protect new products and those who are reviewing existing 3D trade mark registrations may face difficulties registering and protecting the shape of their products.