You remember Rubik’s Cubes don’t you? Of course you do, fashionable in the 80s, retro in the 90s, slightly forgotten in the noughties, and the subject of an Advocate General opinion in the teenies (yes, 2016 is the “teenies”).
It turns out that in 1996 a UK company applied for the following 3D mark in the EU in relation to “three dimensional puzzles”:
10 years later, in 2006, a German company applied to invalidate the mark. The parties have been fighting the invalidity action ever since.
In an attempt to bring clarity to proceedings the Advocate General (“AG”) has recently given an opinion which the ECJ is likely to follow. In short, the AG suggested that the ECJ should invalidate the Rubik’s Cube 3D mark on the grounds that it consists exclusively of a shape “which is necessary to obtain a technical result”, this being a specific reason for refusal under Article 7(1)(e)(ii) of the EU Trade Mark Regulation.
In formulating his opinion the AG differed from the views of the earlier courts and found that: (a) the mark needed to be considered in the context of the “three-dimensional puzzles” classification (making it more obvious as to the intended function), and (b) the grid structure was not a decorative or imaginative element, instead it was one that performed a technical function.
The current world record for solving a Rubik’s Cube is 5.25 seconds. The European trade mark courts are coming up to the 10-year mark on this invalidation action which suggests that the legal question is over 60 million times more complicated than the Rubik’s Cube itself! However, on its face at least, the AG’s opinion does seem fairly logical. It’s also a useful reminder to applicants that 3D trade mark applications cannot be used to get past the “design dictated by function” prohibition found in design registrations. In both cases, and probably quite rightly, a monopoly can’t be obtained on something which has to look a certain way in order to work.
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