We are all familiar with the frustrations of attempting the Rubik’s cube puzzle, knowing that the pieces need to be turned in a certain way to achieve the solution, but a recent European Court of Justice ruling has confirmed that the existence of the all-important internal rotating mechanism was fatal to its trademark application and thus the shape is not protected.
Trademarks that cannot be registered include those which consist of a shape which is necessary to obtain a technical result.
In 1996 Seven Towns Limited (the company managing the IP rights of the Rubik’s cube) applied to register the sign below as a Community Trademark in class 28 under ‘three-dimensional puzzles’.
The Mark was registered in 1999. In 2006 a German rival, Simba Toys GmbH, filed an application for a declaration of invalidity. The application went through several hearings and appeals and has recently been considered by the ECJ. Simba’s appeal to that Court included an argument that the trademark should not be permitted as it was a sign which consisted exclusively of the shape of goods necessary to obtain a technical result. That ground of appeal was upheld and the Court ordered costs of the first instance case and the appeals against Seven Towns.
Whilst the name ‘Rubik’ cannot be used by others and other ‘Rubik’ trademarks are still in place, the ruling goes to show the importance of expert advice on IP protection: for example the position on protection of the cube puzzle may well have been different had Seven Towns applied for a patent on its internal workings rather than a trademark on the shape.
