On 25 November 2014, the General Court of the European Union held that the registration of the shape of the Rubik's cube as a Community Trade Mark is valid.
Seven Towns Ltd registered the shape of the Rubik's cube as a three-dimensional Community Trade Mark in 1999. In 2006 Simba Toys, a German toy manufacturer, applied to the Office for Harmonisation in the Internal Market ("OHIM") for invalidation of the Community Trade Mark.
Simba Toys claimed that the Rubik's cube involves a technical solution consisting of its rotating capability which, pursuant to Article 7(1)(e)(ii) of Council Regulation (EC) No. 207/2009 of February 26 2009 on the Community Trade Mark, cannot be registered as a Community Trade Mark. Simba Toys maintained that such a solution falls within the scope of a patent. However, OHIM rejected the application for a declaration of invalidity on 14 October 2008. The Second Board of Appeal of OHIM's confirmed this decision on 1 September 2009. Simba Toys subsequently brought an action before the General Court for annulment of OHIM's decision.
The General Court explained that the ground for refusal under Article 7(1)(e)(ii) of the Community Trade Mark Regulation requires: (i) identification of the essential characteristics of the Trade Mark; and (ii) ascertaining whether these essential characteristics all perform the technical function of the goods at issue.
The General Court found that the essential characteristics of the mark are, first, the cube as such, and second, the grid structure which appears on each of its surfaces. Simba Toys contended that the black lines in the Rubik's Cube perform a technical function as they are a consequence of the rotating capability of individual elements of the cube. However, the General Court disagreed, stating that the rotating capability of the vertical and horizontal lattices of the Rubik's cube does not result either from the black lines or the grid structure, but from an internal mechanism of the cube which is invisible from its graphic representations and therefore cannot constitute an essential characteristic of the mark. According to the General Court, the registration of the shape of the Rubik's cube as a Community Trade Mark can therefore not be refused on the ground that that shape incorporates a technical function.
The General Court clarified that the Community Trade Mark does not allow its proprietor to prohibit third parties from marketing all types of three-dimensional puzzles that have a rotating capability. The Court affirmed that the proprietor's marketing monopoly is limited to three-dimensional puzzles that have the shape of a cube of which the surfaces bear a grid structure.
Lastly, the General Court also rejected Simba Toys' argument that the Rubik's cube is void of any distinctive character, finding that the grid structure of the cube differs considerably from other three-dimensional puzzles available on the market. The General Court concluded that the structure has a distinctive character which enables consumers to identify the producer of the goods in respect of which the mark is registered from other producers.
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