Colours cannot save functional shape: Rubik's Cube EUTM registrations invalidated

What has happened?

• The EU General Court has confirmed the cancellation of EUTM registrations for the 3D shape of the Rubik's Cube, holding that they fall foul of the prohibition on registering marks consisting exclusively of the shape of the goods necessary to achieve a technical result (Article 7(1)(e)(ii)).

• Case law says that a mark consists exclusively of a shape necessary to achieve a technical result if all of the "essential characteristics" of the mark achieve a technical result. The presence of one or more minor aesthetic elements does not help. There must be at least one non-functional "essential characteristic". 

• Here, the Court identified three essential characteristics of the marks: (1) a cube shape; (2) a grid structure separating small squares on each face; and (3) the differentiation of those small squares by means of six basic colours. All achieved a technical result.

• Arguments from Spin Master, the owner of the registrations, that characteristic (3) is not part of the shape of the goods were rejected. This aspect of the ruling is of less relevance now since Article 7(1)(e)(ii) has been amended to prohibit the registration of marks consisting exclusively of not only the shape – but any characteristic - of the goods necessary to achieve a technical result. While the old wording is still relevant to marks registered before the amendment, the Court's ruling shows a willingness to interpret the word "shape" in the old legislation liberally.

• The Court also held that the specific colours used (red, orange, yellow etc) and their arrangement (eg white on the top face, yellow on the bottom face) were minor elements such that the mark as a whole was not registrable.

• This is an important reminder for brand owners to ensure that their goods include a significant aesthetic (and non-functional) element if they wish to register them as trade marks. It is also a reminder to correctly describe your mark since it was unclear here whether the intention was to protect the shape of the cubes or their surface decoration. 

Want to know more?

Background

Verdes Innovation SA applied to invalidate EUTM registrations for the 2x2, 3x3, 4x4 and 5x5 Rubik's Cube configurations (now owned by Spin Master). The goods in issue were those in Class 28 (games etc). The facts, arguments and judgments in all four cases were almost identical. The contested marks depicted a cube with six surfaces arranged in three pairs of parallel faces, each pair perpendicular to the others. 

Each adjacent face displayed a different colour (red, green, blue, orange, yellow or white) and featured a grid structure formed by black borders dividing each surface into equal segments. The marks also specifically claimed protection for these six colours.

The legal framework

Under Article 7(1)(e)(ii) of the EUTM Regulation relevant to this registration, signs which consist exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered. The public interest underlying this provision is to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product.

Reminder of the law on shape marks

We know from previous case law that the following provisions apply when considering whether a mark falls foul of Article 7(1)(e)(ii).

• Essential characteristics. A mark consists exclusively of a shape necessary to achieve a technical result if all of its "essential characteristics" achieve a technical result. The expression "essential characteristics" refers to the most important elements of the mark, identified on a case-by-case basis either from the overall impression or by examining each component in turn. Expert evidence can sometimes be relevant.

• Distinctive character irrelevant. Distinctive character (whether inherent or acquired) is irrelevant in determining the essential characteristics. A "technical result" objection cannot be overcome by providing evidence of acquired distinctiveness through use.

• Functionality analysis. Once the essential characteristics are identified, the EUIPO must ascertain whether those characteristics perform the technical function of the goods, assessed in the light of the technical function of the actual goods represented. This does not necessarily mean that all functional aspects achieve a technical result. For more on this, see here.

• Alternative shapes irrelevant. The existence of other shapes which could achieve the same technical result is irrelevant; registration is still prohibited. 

• Minor non-functional elements do not help. The presence of one or more minor aesthetic elements does not help if all essential characteristics achieve a technical result. There must be at least one non-functional "essential characteristic".

• Aesthetic value does not preclude application. The fact that an essential element which is necessary to obtain a technical result also has aesthetic value does not preclude the application of the prohibition.

• Services excluded. The prohibition applies only to goods, not services (for more on this, see our article here).

What are the essential characteristics of the Rubik's cube marks?

The parties (and Court) agreed that there were at least three essential characteristics: (1) a cube shape; (2) a grid structure separating small squares on each face; and (3) the differentiation of those small squares by means of six basic colours, making it possible to distinguish them and producing a contrasting effect. 

Spin Master argued that the six specific colours used and their arrangement (eg white on the top face, yellow on the bottom face) on the Rubik's cube also constitute essential characteristics of the marks and were not functional. The Court disagreed, holding that they do not constitute essential characteristics of the marks, as they are of minor and secondary importance. The only essential element regarding colour is the differentiation between the small squares on each face (essential characteristic (3)).

Is essential characteristic (3) even part of the shape of the mark?

Spin Master also argued that colours are not part of "shape" within the meaning of Article 7(1)(e)(ii). It relied on various arguments, including the fact that Article 7(1)(e) has now been amended to extend the provision to "other characteristics" of the goods, which would suggest that the word "shape" in the old version of the legislation means "shape" and nothing else.

However, the Court held that the concept of 'shape' must not be interpreted in an excessively narrow manner that would exclude any coloured shape of goods. Here, because the mark was registered as a 3D mark, the colour differentiation was considered inherent in - and inseparable from - the shape itself.

Is essential characteristic (3) necessary to achieve a technical result?

Spin Master also argued that, whilst differentiation is necessary, the way this is achieved is aesthetic not technical, citing infinite design possibilities, the creator's intent to make the cube "exciting", and the fact that previous patents did not claim colours. 

This was somewhat of a rehash of Spin Master's arguments about the specific colours and their arrangement (see above) and the Court quickly dismissed them. It held that the contrasting effect of the different sides of the cube constitutes an essential characteristic necessary to obtain a technical result, and that alternative designs are irrelevant once a causal link between essential characteristics and technical result is established.

What does this mean for you?

• While previous patent protection does not rule out subsequent trade mark protection (see eg here), protecting functional shapes can be tricky. Ideally, product designers should involve IP teams at the product development stage.

• Careful thought is needed before trade mark applications are filed, in particular, to ensure that the mark is correctly described.

• Only product shapes that include a significant aesthetic (and non-functional) element can be registered as trade marks. However, it should be remembered that just because a particular product has technical aspects, it does not mean that it achieves a technical result. For more on what technical result means, see here.