How does a Lego brick differ from Rubik’s Cube?
They have much in common. Both of these creative toys develop dexterity, logical thinking skills and imagination. But the European Court of Justice has held that the shape of Lego bricks is determined solely by their functional characteristics, while the EU’s General Court has found the opposite to be true of the shape of Rubik’s Cube. In practice this means that a graphic presentation of a Lego brick cannot be a trademark, but a graphic presentation of Rubik’s Cube can.
Simba Toys GmbH & Co. KG v OHIM, Case T-450/09 (judgment of the General Court, 25 November 2014)
The rights to Rubik’s Cube, a puzzle many find magical, belong to the British company Seven Towns. At the company’s request, in 1999 the Office for Harmonisation in the Internal Market registered the shape of Rubik’s Cube as a Community trademark for a “three-dimensional puzzle.”
In 2006, Simba Toys, a German toy manufacturer, filed a request with OHIM for a declaration of invalidity of the three-dimensional trademark. The applicant argued that Rubik’s Cube contains a technical solution consisting of the ability to rotate elements of a cube, which could not be protected as a trademark but only as a patent. Obviously, the competitor wanted to limit the protection of Rubik’s Cube as a trademark that could theoretically be unlimited in time. If Rubik’s Cube were regarded as a technical solution, i.e. a patent, it could be protected for only 20 years, after which it would join the public domain and could be freely used by other businesses. OHIM denied the application, and Simba Toys sought relief from the General Court.
The court also denied Simba Toys’ claim and held that the shape of Rubik’s Cube could be registered as a trademark. The key to the decision was the court’s view of the nature of the black lines making up part of the structure of Rubik’s Cube and dividing the grid into squares. Simba Toys suggested that consumers will perceive the black lines as serving the function of dividing the cube into individual elements and serving a technical function because they enable the elements to be moved about. But the court found that this was erroneous, because it is not the black lines or the grid they form that allows the elements to be moved, but the invisible rotating mechanism inside the cube. Therefore the shape could not be denied registration as a Community trademark on this basis.
The court pointed out that a shape cannot be registered as a sign if it consists “exclusively” of “the shape of goods which is necessary to obtain a technical result.” As the court aptly stressed, “any shape of goods is, to a certain extent, functional,” and “it would therefore be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional characteristics.” The terms “exclusively” and “necessary” ensure that “solely shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered.”
In the recent ruling, the General Court was guided by an earlier judgment by the European Court of Justice involving Lego bricks (Lego Juris A/S v OHIM, ECJ judgment of 14 September 2010, Case C‑48/09 P), and indeed had stayed the ruling in the Rubik’s Cube case until the ECJ decided the Lego case. The General Court adopted the interpretation by the ECJ in the Lego case of when a shape is “necessary to obtain a technical result,” but in the case of Rubik’s Cube reached the opposite conclusion from that reached by the ECJ in the case of Lego bricks. There, the studs projecting from the top of each Lego brick are necessary to obtain the technical result of the product, namely to connect to the underside of another brick. But in the case of Rubik’s Cube, the court found that there was no necessary connection between the ability to rotate the elements of the puzzle and the appearance on the face of the cube of black lines or a grid structure. Nonetheless, when analysing the two cases it is hard to find a reason why the two marks were evaluated so differently.
The General Court’s evaluation of Rubik’s Cube represents a break from the noticeable recent trend toward narrowing the scope of protection of trademarks. The ruling respects the general rule that shape may function to distinguish products of different manufacturers—particularly in the case of well-known products. Undoubtedly the six-sided structure of Rubik’s Cube differs from the presentation of other three-dimensional puzzles on the market and helps identify the source of the product. The judgment in Simba Toys carries the hope of a reversal of the trend to refuse recognition of shapes of goods as trademarks, but the case may be appealed by Simba Toys and the case examined by the European Court of Justice.
Lena Marcinoska, Intellectual Property Practice, Wardyński & Partners
