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 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.
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).
Dr Tim Sampson / 14th Nov 2016
The information and any commentary on the law contained on this web site is provided free of charge for information purposes only. Every reasonable effort is made to make the information and commentary accurate and up to date, but no responsibility for its accuracy and correctness, or for any consequences of relying on it, is assumed by any member of Chambers. The information and commentary does not, and is not intended to, amount to legal advice to any person on a specific case or matter. You are strongly advised to obtain specific, personal advice from a lawyer about your case or matter and not to rely on the information or comments on this site. No responsibility is accepted for the content or accuracy of linked sites.
If you like what you've read but want to know more about how we can help you, simply call us:
Alternatively you can send us an email and a member of our team will contact you as soon as possible.