RUBIK’S CUBE®: THE SHAPE OF THE CUBE AS A 3D TRADE MARK VALIDATED BY THE SIXTH CHAMBER OF THE COMMUNITY COURT ON 25 NOVEMBER 2014
As the 3D puzzle RUBIK’S CUBE® was celebrating its fortieth birthday in 2014, observed in particular by the website GOOGLE, the Community Court confirmed the protection of the 3D Community trade mark representing the famous cube in a decision on 25 November 2014 after eight years of proceedings :
On 1 April 1996, SEVEN TOWNS LIMITED filed the 3D Community trade mark representing the black and white cube with black gridlines to signify the “3D puzzles” in Class 28.
On 15 November 2006, SIMBA TOYS GmbH brought a cancellation action against this trade mark on the grounds that this sign cannot be protected under trade mark law; this action was dismissed by the OHIM (the Community office) on 14 October 2008 and subsequently by the 2nd Board of Appeal of the OHIM on 1 September 2009. Following the appeal lodged by SIMBA TOYS GmbH, the 6th Chamber of the Community Court rendered a judgement dismissing the latter’s appeal and thus validating the 3D trade mark.
SIMBA TOYS GmbH ruled that the 3D trade mark representing the cube should be invalidated on the grounds set out below. The Court dismissed all of the arguments presented, thus confirming the validity of the trade mark.
This decision is particularly interesting in that it allows for an examination of the question of the validity of a 3D trade mark with respect to the 5 main grounds for refusal of protection and when the Court bases its decision on well-established case law of the Court of Justice of the European Union [in particular the ruling of 14 September 2010, Lego Juris/OHIM, representation of a Lego brick (C 48/09 P); ruling of 18 June 2002, Philips, representation of three circular heads with rotating blades orientated to form an equilateral triangle (C 299/99); rulings of 29 April 2004, Henkel/OHIM, representation of a red and white rectangular tablet (C‑456/01 P and C‑457/01 P); ruling of 7 October 2004, Mag Instrument/OHIM, representation of flashlight shapes (C‑136/02 P)] and of the Community Court (ruling of 6 October 2011, Bang & Olufsen/OHIM (representation of a loud speaker (T 508/08).]
1. The trade mark consists exclusively of the shape of the product which is necessary to obtain a technical result (Art. 7, §1, (e), (ii) of the Community Trade Mark Regulations (CTMR))
In accordance with Community case law, the Court had to identify the basic features of the trade mark representing the 3D cube, i.e. the most important features (in this case, the cube and the grid), and verify whether each of them fulfils a technical function of the product at issue (for the trade mark to be rejected on the basis of Art. 7, §1, e), ii) it must be established that the basic features themselves fulfil the technical functions of the product at issue rather than being the result of latter).
The Court held that the cube itself, on one hand, and the grid structure which figures on each side of the cube, on the other, constitute the basic features of the trade mark.
The company SIMBA TOYS GmbH held that the black lines fulfilled a technical function, i.e. separating the individual elements of the cube from each other so that they can be moved and individually rotated.
The Court dismissed this argument on the grounds that it is essentially based on knowledge of the rotational capacity of the vertical and horizontal stripes of the cube. However, this rotational capacity results from an internal mechanism which cannot be observed when the trade mark is represented graphically and therefore cannot be held to constitute a basic feature of the trade mark because it cannot be deduced from an objective analysis of graphical representations of the contested trade mark that an internal rotation mechanism exists. In fact, the black lines and, more generally, the grid structure which figures on each side of the cube at issue do not fulfil and do not even suggest any technical function whatsoever.
The Court therefore concluded that there is not necessarily a link between, on one hand, a potential rotational capacity or indeed any other possibility of moving certain elements of the cube at issue and, on the other hand, the presence, on the sides of such cube, of thick black lines let alone a grid structure like the one which figures on the graphical representations of the contested trade mark.
2. The trade mark consists exclusively of the shape which results from the very nature of the product itself (Art. 7, §1, (e), (i) CTMR)
The Court held that this provision does not apply in this particular case because the nature of the products concerned, in this case 3D puzzles, in no way dictates that the products must take the form of a cube with a grid structure on each side.
3. The trade mark consists exclusively of the shape which gives substantial value to the product (Art. 7, §1, (e), (iii) CTMR)
The company SIMBA TOYS GmbH argued that, to the extent that the individual features of the shape at issue (cube with grid) constitute necessary components of a 3D puzzle with certain “optimised, individual features (convertibility, a certain level of difficulty and ergonomic functions)”, this shape gives substantial value to the products concerned and to their commercial success.
For these grounds for refusal to be retained, the sign at issue must consist exclusively of a shape and the aesthetic features of the shape, i.e. its external appearance, must to a large extent determine the consumer’s choice and thus the commercial value of the product at issue.
The Court dismissed these grounds, holding that the arguments presented by the company SIMBA TOYS GmbH were based on an idea that it is certain functional features of the shape at issue which give substantial value to the products at issue and that the arguments do not show, nor do they claim, that any such substantial value derives from the aesthetic appearance of the shape.
4. The trade mark lacks distinctive character (Art. 7, §1, (b) CTMR)
The distinctive character must be appreciated, on one hand, in relation to the products or services for which registration has been applied and, on the other hand, in relation to the relevant public’s perception of it.
In accordance with case law, the closer the form for which trade mark registration has been applied is to the most likely shape for the product at issue, the more likely it is that such shape lacks distinctive character within the meaning of Article 7, § 1, (b), of Regulation n° 40/94. In these conditions, only a trade mark which significantly diverges from the standards and customs of the sector and, in so doing, is in a position to fulfil its intended basic function, is distinctive.
The Court dismissed the arguments presented by the company SIMBA TOYS GmbH and based on this article. It held in particular that the external appearance of the shape at issue cannot be considered to be a simple variation of an ordinary 3D puzzle which comes naturally to mind and pointed out that the presence of a grid structure on each side of the cube at issue gives the contested trade mark, taken as a whole, the appearance of a “black cage” (see point 44 above). It concluded that these features are sufficiently specific and arbitrary to give this trade mark an original look likely to forge itself easily in the memory of the average consumer and allow the latter to distinguish the products covered by such trade mark from those of a different commercial origin.
5. The trade mark is descriptive (Art. 7, §1, (c) CTMR).
Article 7, §1, (c) CTR refuses the registration of a trade mark made up exclusively of signs or indications which may serve to designate the type, quality, quantity, destination, value, geographical origin, time of production of the product or of delivery of the service, or any other such characteristics.
The company SIMBA TOYS GmbH claimed that the contested trade mark, to the extent that it “shows a cube with certain elements which are graphically separated from each other by black lines” is “simply descriptive of a 3D puzzle in the shape of a ‘3 x 3 x 3’ cube.”
In order to reject this allegation, the Court pointed out that there is reason to consider that, from the relevant public’s perspective, the relationship between, on one hand, the contested trade mark and, on the other, 3D puzzles is not sufficiently direct and concrete because the public will not spontaneously perceive (i.e. in particular, without having prior knowledge of the RUBIK’S CUBE®, without ambiguity and without at least some reflection or analysis) the features of the contested trade mark invoked by the applicant as describing a 3D puzzle for which the trade mark has been filed.
The protection of a sign as a trade mark allows for the implementation of the defences provided for by Community and national legislation to prohibit the manufacture and sale of counterfeit products, in particular procedures for seizure and for detention under customs control.
Therefore, on the basis of a request for national intervention based on the 3D trade mark representing the RUBIK’S CUBE® cube, French customs were able to seize and destroy tens of thousands of counterfeit cubes in 2014.
(Source: French customs, December 2014)