26 February 2015: Rubik’s Cube: Unlocking 3D trade marks

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Most people are familiar with the appearance of a ‘Rubik’s Cube’. Named after the Hungarian inventor Erno Rubik, the 3D puzzle is thought to be the best selling toy of all time. Over 350 million have been sold worldwide, and the intellectual property rights associated with the cube are therefore extremely valuable. In the UK, Seven Towns Limited (STL) manages the rights related to the ‘Rubik’s Cubes’. This includes multiple words, registered as trade marks across Europe, a trade mark registration for the three dimensional shape of the puzzle, and many designs. The original patent has long since lapsed.

In a recent General Court (GC) case (Simba Toys GmbH & Co. KG v OHIM T-450/09), decided in November 2014, the validity of the three dimensional trade mark registered by STL and depicting the shape of a ‘Rubik’s Cube’ (see image) was challenged by a German toy manufacturer, Simba Toys.

There are strict rules surrounding the registrability of three dimensional shapes as trade marks. These rules aim to prevent an ‘abuse’ of the trade mark system that would arise from the grant of an indefinite monopoly right on the shape of an article in commerce. The basis of Simba Toys’ invalidity action was that the protection afforded to the Rubik’s cube was in violation of these rules. These and other objections were discussed in turn by the court before STL’s mark was ultimately found to be valid.

Restrictions on 3D trade marks
The first restriction is that a shape cannot be registered if it arises from the nature of the article itself. If all similar articles are guaranteed to have a given shape, then a trade mark should not be awarded to a single applicant effectively monopolising the article by providing him or her with a monopoly over the shape. In the present case, the court held that the nature of Rubik’s puzzle did not necessarily require it to be the shape depicted in the application. The pictures showed the well-known cubic puzzle, with a nine-piece grid on each face. It is well known that 3D puzzles with rotational abilities are available in a variety of different shapes and sizes.

The second restriction on the registerability of a 3D shape is that the essential characteristics of the mark cannot be necessary for the article to obtain a technical result. This restriction is in place to prevent trade mark protection being used to monopolise a device that should be protected by patent rights. Patent protection is only available for a maximum term of 20 years, deemed an appropriate time for an inventor to benefit from his invention before the technology should be available for public use and development. Trade mark protection is in theory available indefinitely, subject to continued use and regular renewal fee payments, and it would be an abuse to extend protection for a technical device indefinitely through the trade mark system.

This was the key restriction discussed in the present case. Simba Toys submitted that the black lines in the pictures, separating the nine panels on each face of the cube were necessary to separate the panels, such that the toy could be rotated. However, in this case the court stated that the rotational capabilities of the cube were due to an internal mechanism, not visible in the application. It would be possible to create a cube with rotating elements with no visible separating lines. Therefore the black lines in the pictures were not essential, and the registration would not be rejected under this restriction.

Finally, a 3D shape should not be registered if the shape gives substantial value to the goods. This restriction prevents a trade mark proprietor gaining an indefinite monopoly over a shape that a consumer believes to be desirable, such that competitors may not closely compete. Such shapes are more suited to registered design protection, giving a limited duration protection of up to 25 years in Europe. In this case, the court stated that the substantial value of a ‘Rubik’s Cube’ could not be attributed to the aesthetic features of the shape depicted in the application.

This case provides useful guidance on how to better assess the registerability of three dimensional trade marks, and is a rare example of the three dimensional shape of a product qualifying for trade mark protection. In this case, STL’s registered trade mark will now continue to protect the appearance of ‘Rubik’s Cubes’ for as long as the mark remains registered. As the design and patent rights are no longer valid, this will remain an incredibly valuable form of protection for STL.

Rachel Grovenor 

This article is for general information only.  Its content is not a statement of the law on any subject and does not constitute advice.  Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.