Rubik's Cube, a multicolored three-dimensional puzzle invented in 1974 by Hungarian inventor/architect Erno Rubik, lost a decade-long trademark battle with the European Union Court of Justice (“ECJ”) deciding that its shape does not amount to a protectable trademark. British company Seven Towers, which manages the intellectual property rights in the uber-popular toy – 350 million Rubik’s Cubes have been sold worldwide – registered the shape of the toy as a three-dimensional trademark with the European Union Intellectual Property Office (“EUIPO”) in 1999, only to officially lose it on Thursday.
As you may recall, Fürth, Germany-based toy company Simba Toys, challenged Seven Towers' trademark rights in the cube in 2006, arguing that relying on trademark law (which protects any word, name, symbol, or design - including logos, colors, sounds, product configurations, etc. - or any combination thereof used in commerce to identify and distinguish the goods of one brand from those of another) for protection was inappropriate. Simba alleged that due to the functional rotating capability of the cube, it should be protected by patent law (which provides protection for new and useful processes, machines, articles of manufacture, or compositions of matter, or any new and useful improvement thereof).
After losses in front of the EUIPO and a lower European court, Simba took its case to the Luxembourg-based ECJ, the European Union's highest court, which ruled in its favor this week. According to the ECJ panel, “In examining whether registration ought to be refused on the ground that shape involved a technical solution, EUIPO and the general court should also have taken into account non-visible functional elements represented by that shape, such as its rotating capability.”
The court's ruling centered largely on Article 7(1)(e) of the Community Trademark Regulation, (Council Regulation (EC) No 40/94 of 20 December 1993 on the Communty trade mark), which outlines the "grounds for refusal of a [trademark] application." It states that the following are not registrable, "(e) signs which consist exclusively of: (i) the shape which results from the nature of the goods themselves; or (ii) the shape of goods which is necessary to obtain a technical result; or (iii) the shape which gives substantial value to the goods."
David Kremer, president of Rubik’s Brand in the UK, said: “We are disappointed by today’s decision by the ECJ. While the Rubik Brand is fortunate in having other trademarks, copyright, passing off and unfair competition protection to rely on which will continue to ensure its exclusivity, this judgment sets a damaging precedent for companies wishing to innovate and create strong brands and distinctive marks within the EU, and is not what European lawmakers intended when they legislated for 3D trademarks. We are baffled that the court finds functionality or a technical solution implicit in the trademark.”