«Rubik’s cube»: trademark or patent?

Return to News — Monday 25 November — 2019 by Cristina Pemán

It is common for companies to try to extend exclusivity rights over their products, especially when it comes to a successful product; and, since protection over inventions has a limited lifespan, its owners often use the figure of the three-dimensional trademark to ensure that their rights endure. The problem is that this can significantly reduce the opportunity for other companies to use that technical solution.

On the line, the procedure for the rights of the owner of the world-renowned «Rubik's Cube», on which a Patent right was granted in the 1970s, remains open. Given the impossibility of continuing to exploit the invention exclusively, in 1996 its protection was requested as a three-dimensional mark in the category of “three-dimensional puzzles”. The trademark, granted in 1999, represents the cubic shape of the toy.

Simba Toys, a German toy manufacturer, applied in 2006 to the European Union's Intellectual Property Office (EUIPO) for a declaration of invalidity of the three-dimensional trademark, claiming, in particular, that it incorporated "a technical solution consisting of its ability to rotate, and that such a solution could only be protected by a patent, and not by a trademark".

The EUIPO and the General Court of the European Union (TG) rejected their application and the subsequent action brought, on the ground that the cubic form at issue did not incorporate a technical solution preventing it from being protected as a trademark. In particular, the TG stated that the technical solution that characterized the Rubik's cube does not result from the characteristics of this form, but rather from an invisible internal mechanism of the three-dimensional figure.

Simba Toys brought an appeal before the Court of Justice (CJ) against the judgment of the General Court, which annulled both the TG's judgment and the EUIPO decision. In that judgment, the CJ observed that EUIPO and the TG should also have considered the invisible functional element of the product, represented by that form and its ability to rotate.

Following that judgment, EUIPO held that the representation of the cubic form at issue consisted of three essential characteristics: (i) the shape of the cube itself; (ii) the black lines and gridded faces of the cube; and (iii) the color difference of each of the six faces of the cube.

In this context, EUIPO considered that all the essential features were necessary to obtain the technical result consisting of "pivoting on an axis, vertically and horizontally, rows of smaller cubes and of different colors that were part of a larger cube, until the nine squares of each face are of the same color".

However, since the Regulation of the EU trademark does not permit the registration of a form whose essential characteristics are necessary to obtain a technical result, the EUIPO concluded that the contested trademark had been registered in breach of that regulation and therefore annulled its registration.

Rubik's Brand Ltd, the current owner of the contested trademark, challenged the latter EUIPO decision before the TG.

By its judgment of 24th October, the TG states that EUIPO's decision has an error of assessment in finding that the colour difference of each of the six sides of the cube constituted an essential characteristic of the contested trademark. In that regard, the TG states that, on the one hand, Rubik's Brand has not at any time held that the possible presence of colors on each of the faces had an important role in the registration of the contested mark, and, on the other, that a simple visual analysis of the graphic representation of that mark does not make it possible to distinguish with sufficient precision the existence of a different color on each of the six faces of the cube.

Thus, in those circumstances, the TG concludes that, although the colour differences of each of the six faces of the cube do not constitute an essential feature of the contested trademark, the two characteristics of that trademark which have been correctly qualified as essential by EUIPO -the black lines that intersect on each of the faces of the cube, which in turn divide them into nine smaller cubes, and the shape of the cube itself- are necessary to obtain the result pursued by the product, represented by the cubic form at issue, so that the latter should not have been able to register as an EU trademark.

Consequently, the TG upholds the contested decision and dismisses Rubik's Brand's action, thereby annulling the European Union trademark.