27 Jan General Court of the European Union (EGC)-Three-dimensional trademark in the form of the “Rubik’s cube” (T-601/17)
By a judgment of 24 October 2019, the General Court of the European Union (EGC) confirmed the cancellation of the three-dimensional trademark reproduced below initially registered as a European Union trademark on 6 April 1999 to designate “three-dimensional puzzles” in Class 28, namely:
The issue relating to the validity of this trademark begins in 2006 when a toy manufacturer requested the European Union Intellectual Property Office (EUIPO) to cancel this three-dimensional trademark on the grounds that it cannot be protected as a trademark because the essential characteristics of the mark fulfil a technical function of the product (rotational capacity).
This was followed by lengthy debates both before the EUIPO as well as before the European jurisdictions. With its decision, the General Court confirmed the cancellation of this three-dimensional trademark.
As a reminder, a sign representing the shape of a product or its packaging may legitimately constitute a European Union trademark provided, however, that the sign does not consist in particular of “the shape, or another characteristic of the product, necessary to obtain a technical result” – (Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark).
Thus, the General Court of the European Union held that the three-dimensional trademark ‘Rubik’s cube’ could not be registered as a trademark on the ground that “the two characteristics of the contested mark which were correctly qualified as essential by the Board of Appeal, in this case the overall shape of the cube, on the one hand, and the black lines and small squares on each side of the cube, on the other hand, are necessary to obtain the technical result sought by the product concerned“, i.e. to allow the rotation of the different rows of small cubes.
The registration of a three-dimensional trademark is not an easy task and particular attention should be paid to the characteristics of the sign in question in order to limit, as far as possible, the rejection of an application for registration or its cancellation on the grounds of a technical purpose.