For certain trade mark applicants, it is very tempting to seek a form of alternative or extended protection on the basis of trade mark law when the most appropriate protection method has expired.
This was probably Seven Towns Ltd's intent when it filed a three-dimensional CE trade mark application in the form of a Rubik's Cube toy to designate "three-dimensional puzzles" when the Hungarian patent that protected Mr Rubik's invention had fallen into the public domain.
A German rival, Simba Toys - probably hampered by this application - sought to have the trade mark invalidated by the European Union Intellectual Property Office (EUIPO). In this regard, it argued that the form that was the subject of the application in fact covered the toy's capacity to rotate, which is a technical solution that falls under patent law.
EUIPO's Invalidity Division and its Board of Appeal in turn rejected this petition, and Simba Toys then filed an appeal to overturn EUIPO's decision before the General Court of the European Union.
This appeal was dismissed, however, as the Court held that the three-dimensional form of the Rubik's Cube, as filed, did not include any technical function that created an obstacle to protection as a mark (EGC, 25 November 2014, T-450/09, Simba Toys v/ OHMI – Seven Towns).
The tenacious applicant then filed an appeal with the Court of Justice of the European Union, who finally ruled in its favour on the grounds of Article 7 of Regulation 40/94 of 20 December 1994 (which applied at the time), which provides that registration of "signs which consist exclusively of [...] the shape of goods which is necessary to obtain a technical result" is refused. The Court notes that the essential characteristics of the cubic form in question should be assessed with regard to the technical function of the good that this form represents. It was therefore incumbent on the Court to take into consideration "any additional circumstances which an objective observer would not have been able to ‘fathom precisely’ on the basis of the graphic representations of the contested mark, such as the rotating capability of individual elements in a three-dimensional ‘Rubik’s Cube’-type puzzle" and define "the technical function of the actual goods" (CJEU, 10 November 2016, C-30/15).
This decision constitutes a reminder that the protection of a three-dimensional trade mark is based on precise conditions and that it cannot be construed as a means to artificially prorogate patent protection that has come to its term.
