By, Sandhya Gupta

The European Union Intellectual Property Office (EUIPO) granted trademark protection to Seven Towers in 1999 for its famous ‘Rubik’s Cube’ which is a three-dimensional puzzle. At the time of registration, Seven Towers only provided the visual, graphical representation of the 3D shape in question without any written description accompanying it. (Pictured below)

In 2006, Simba Toys filed an application for declaring the said mark invalid mainly on the ground that it attracted Article 7(1)(e)(ii) of EU Trade Mark Regulation No 40/94, which states that signs which consist exclusively of the shape, or another characteristic, of goods which are necessary to obtain a technical result are not registrable as a trademark. The intention behind this provision is that since the mark contains a technical solution, the same does not come within the purview of trademark protection but patent protection.

Article 7(1)(e) which is synonymous with Section 9(3) of the Trade Marks Act, 1999 basically provides for three grounds where a trademark which consists exclusively of the shape of goods is not eligible for registration, viz.:

  • The shape of goods results from the nature of the goods itself
  • The shape is necessary to obtain a technical result
  • The shape is adding substantial value to the goods.

The purpose of this subsection is to exclude from registration the shapes which are merely functional in the sense that they are motivated by and the result of technical considerations[i].

The issue was that the graphical representation of the contested mark showcased the shape of a cube with horizontal and vertical black lattices dividing each face of the cube into smaller nine squares. Simba contented that this cube grid structure i.e. the black vertical and horizontal lines on the inside provided for an internal mechanism that was necessary for rotating the cubes. Hence, according to Simba the black horizontal and vertical lattices were functioning to give the cube a rotating capability. Thus the shape provided for a technical solution as far as three-dimensional puzzles were concerned and granting trademark protection over such a shape would mean granting a monopoly for perpetuity over similar three-dimensional puzzles.

However, in 2014, the General Court rejected Simba’s contention and held the mark valid. The court identified the cube and the grid structure as the essential characteristics of the 3D mark in question. It came to the conclusion that both of these essential characteristics were not performing any technical function. The court dismissed Simba’s arguments concerning the rotating capability of the individual elements of the cube in question, which are reflected by those black lines, by observing that those arguments were essentially based on knowledge of the rotating capability of the vertical and horizontal lattices of the ‘Rubik’s cube’, and that that capability cannot result from the characteristics of the shape presented, but at most from an invisible mechanism internal to the cube.[ii]

The Court did not take into account the non-visible element of the shape while deciding on its technical functionality.

However, the scenario took a complete U-turn when the European Court of Justice held in favor of Simba. The Court observed that while assessing functionality the invisible elements that are essential to the functioning of the product can be taken into account. The Court of Justice observed that when examining the functional characteristics of a sign, the competent authority may carry out a detailed examination that takes into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of the application for registration.[iii]

Simply stating even if the grid structure on its face had no function to perform but this shape structure was necessary while making similar three-dimensional puzzles in order for them to rotate or function as they do.

In addition to this, the Board of Appeal also identified the difference in the colors of the six sides of the cube as an essential characteristic of the mark in question in addition to the cube shape and black lines (grid structure). This was rather surprising, as the graphical representation of the mark didn’t highlight any difference in the color of the six sides of the cube nor did Seven Towers seek to register any color for the said mark at the time of registration. Nevertheless, the Board of Appeal considered the color difference as an essential characteristic of the mark in question and also held that it had functionality. The court observed that if the sides of the cube had the same colors, the product would not be able to function as a puzzle.

In 2019, the matter finally came to set with the EU General Court ruling in favor of Simba. The General Court, however, did not agree with the finding that the difference in the color on the six sides of the cube constituted an essential characteristic. The court identified both the overall cube shape and the grid structure as essential characteristics of the mark and held them to be functional in nature. With this, we come to the inference that for the purpose of assessing the functionality of a mark the non-visible elements of the mark may also be taken into consideration.

[i] P. Narayanan, Law of Trade Marks and Passing off (2007).

[ii] Rubik’s Brand Ltd v. European Union Intellectual Property Office (EUIPO), Case T‑601/17, 2019.

[iii] Rubik’s Brand Ltd v. European Union Intellectual Property Office (EUIPO), Case T‑601/17,2019.

Image source: Photo available at: Photo by Olav Ahrens Røtne on Unsplash https://unsplash.com/photos/4Ennrbj1svk