Intellectual Property, Media & Entertainment

CJEU disallows European trademark registration for puzzle cube

On the 10th November 2016 the CJEU held that a European trade mark for the three-dimensional representation of a puzzle (essentially a Rubik’s cube) could not continue to be registered as an EU trade mark as it offended against Article 7(1)(e)(ii) of the Trade Mark Regulation 40/94.

Simba Toys GmbH & Co. v EUIPO and Seven Towns Ltd: Case T-450/09

This regulation precludes the registration of marks that consist exclusively of shapes of goods that are necessary to obtain a technical result. Interestingly, in arriving at that decision the CJEU overturned the earlier decisions of both the Cancellation Division and Board of Appeal of EUIPO and the General Court.

The details of the case

The mark in issue was in the following form registered by Seven Towns in class 28 – for three-dimensional puzzles – and had been registered as a trade mark since 1999.

Simba appealed the decision of the General Court upholding the registration on 6 grounds; however, it was only the first of those grounds that proved to be of any significance in the CJEU’s judgment.

The first ground of appeal was summarised by the Court as follows:

“…that the General Court, … erred in making the application of Article 7(1)(e)(ii) of Regulation No 40/94 subject to the requirement that a technical result may at least be ‘inferred with sufficient certainty’ from the representation of the mark concerned. According to the appellant, no such requirement to ‘fathom precisely’ can be inferred from either the wording of that provision or from the case-law and, in addition, such a requirement goes against the objective thereof.”

Both Seven Towns and the EUIPO rejected that reasoning and sought to have the ground ruled to be inadmissible as an impermissible challenge to factual findings.

Whilst the CJEU accepted that shape of a product can be registered as a trade mark pursuant to Article 4 of the Regulation – so long as that shape is capable of graphic representation and is also capable of distinguishing the goods of one undertaking from those of another undertaking it noted that Article 7(1)(e)(ii) of the Regulation…

“…seeks to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product …. Lego Juris v OHIM, C‑48/09” and that in applying that requirement the court must first identify “…the essential characteristics of the three-dimensional sign at issue…” .

In the present case the essential characteristic of the mark was a grid structure on each side of a cube – and the court then had to ask itself whether the essential characteristic performs a technical function.

CJEU ruling

The CJEU held that the reason the GC had fallen into error was because it “…should have defined the technical function of the actual goods at issue, namely a three-dimensional puzzle…”, rather than discounting the invisible mechanical elements that allow the puzzle’s technical function to be achieved and regarding the technical function being restricted to the visible grid on the cube’s surface.

As such, the Court confirmed that an examination of the technical function of the goods represented by the mark should be undertaken using information about the actual goods but “….without necessarily having to take into consideration any additional circumstances which an objective observer would not have been able to ‘fathom precisely’ on the basis of the graphic representations of the contested mark…”.

In those circumstances the appeal was granted and consequently the three-dimensional cube mark was not capable of registration under Art.7(1)(e)(ii).


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