The General Court confirms the cancellation of the EUTM consisting of the shape of the Rubik’s Cube

In 1999, the cube shape of the iconic Rubik's Cube was registered as a three-dimensional European Union Trade Mark (EUTM). This EUTM was generally respected until 2006, when Simba Toys, a German toy manufacturer, applied to EUIPO for a declaration of the invalidity of the three-dimensional EUTM on the ground that it involved a technical solution consisting of its rotating capability, as such a solution may be protected only by patent and not as a trade mark.

Since EUIPO dismissed the application of the Simba Toys, they brought an action before the General Court of the European Union seeking annulment of EUIPO’s decision. In the following proceedings, the General Court examined whether the cube shape at issue contained a technical solution. As the General Court concluded that the technical solution characterising the Rubik’s Cube did not result from the characteristics of that shape but from a non-visible functional mechanism of the cube, the action brought by Simba Toys was dismissed.

However, Simba Toys appealed to the Court of Justice of the European Union, which did not agree with the previous opinion of the General Court. The Court of Justice concluded that non-visible functional elements of the product represented by the shape should have also been taken into consideration during examination whether the cube shape had involved a technical solution.

Due to the judgment of the Court of Justice, EUIPO was obliged to rule on the case again, having to respect the opinion contained in the judgment. Given that the EUTM Regulation prohibits the registration of a shape whose essential characteristics are necessary to obtain a technical result, EUIPO concluded that the EUTM at issue had been registered in breach of that regulation and, accordingly, cancelled its registration.

Rubik’s Brand Ltd. challenged EUIPO’s decision before the General Court but was not successful. On 24 October 2019, the General Court upheld the decision of EUIPO to cancel the registration of the trademark in question.

The General Court considers that the essential characteristic consisting of the black lines which intersect, horizontally and vertically, on each of the faces of the cube, dividing each of them into nine small cubes of equal size divided into rows is necessary to obtain the intended technical result. Moreover, the General Court considers that the cube shape is inseparable from the grid structure and from the function of the actual product at issue, which is to rotate, horizontally and vertically, the rows of small cubes. The abovementioned characteristics have been correctly identified by EUIPO as “essential and necessary” to obtain the intended result of the product represented by the cube shape at issue. Consequently, the shape could not be registered as a EUTM.