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Will the Dice Soon Be Cast? The Unsettled Status of the Rubik’s Cube EU Trademark

Will the Die Soon Be Cast? The Unsettled Status of the Rubik’s Cube EU Trademark

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The EU trademark history of the Rubik’s Cube, which was invented in 1974 by the Hungarian Erno Rubik, goes back to April 1, 1996, when the UK-based company Seven Towns Ltd, filed an application to register the “three-dimensional puzzles” trademark by using the three-dimensional mark of the Rubik’s Cube. The trademark for the shape was issued by the EU’s Trademark Office (EUIPO) on April 6, 1999. 

The legal debate over the trademark for the shape of the Rubik’s Cube began in 2006 when Simba Toys, a German toy manufacturer, applied to EUIPO to have Seven Towns’ three-dimensional mark cancelled on the grounds that, inter alia, the mark involved a technical solution in the form of its rotating capacity, and that such solutions can be protected only by patent and not by trademark. On September 1, 2009 the Second Board of Appeal of EUIPO dismissed this application, and Simba Toys then brought an action to annul the EUIPO’s decision before the General Court of the European Union.

On November 25, 2014 the General Court dismissed the action of Simba Toys. The General Court stated that even if the shape did incorporate a technical function, the internal mechanism of the cube is invisible in its graphic representations, and therefore, it cannot serve as a ground for the refusal of the trademark for the shape. 

Simba Toys appealed to the European Court of Justice against the judgment of the General Court and EUIPO. On May 25, 2016 Advocate General Maciej Szpunar proposed that the Court of Justice set aside the judgment of the General Court and annul the decision of EUIPO. The Advocate General noted that the General Court restricted itself to an examination of the graphic representation on which the registration had been applied for, and did not take other essential information into account. The Advocate General stated that the relationship between the technical function of the goods and the characteristics of the shape represented had not been analyzed at all, even though, according to the relevant EC Regulation (Regulation (EC) No 207/2009), the registration of signs will be refused if it consists exclusively of the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result. Therefore, according to the Advocate General, the functional features of the shape and the function of the product should have been taken into account in the first place.  

We can state with utter conviction that the technical function and the shape of the Rubik’s Cube are inseparably connected. However, it is not obvious that this connection is exclusive, which has to lead to the exclusion on the basis of the above regulation rules. Although the shape and design of the Rubik’s Cube is known throughout the world, its functioning is so complex that someone who has never used the Rubik’s Cube could not conclude its function, if this person examines only the registered graphic representation 

The uniqueness of the Rubik’s Cube – and therefore its difference from other three-dimensional puzzles available on the market – is obvious. Maybe it is not so outrageous that at the time of the invention of the Rubik’s Cube the function came first and it was only followed by the design. However, since then its design and shape have become as unique as its functioning. 

As stated by the General Court in its judgement, the registered trademark of the “three-dimensional puzzles” formed by the three-dimensional mark of the Rubik’s Cube does not preclude other manufacturers from creating other three-dimensional puzzles with similar rotation functions. However, they have to respect the registered trademark of the Rubik’s Cube and have to use a different design. The Rubik’s Cube is distinct and is known worldwide and the marketing monopoly generated by its trademark is limited to three dimensional puzzles that have the shape of a cube, the surfaces of which bear a grid structure (as indicated on the graphic representations of the trademark).

By Kinga Hetenyi, Managing Partner, and Roland Szebenyi, Associate, Schoenherr Hungary

This Article was originally published in Issue 3.3 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.