The matter at hand

In the late 1990s, Seven Towns, the company that manages the IP rights relating to the famous Rubik’s Cube, successfully applied for the registration of the shape of the Rubik’s Cube as a three-dimensional EU trade mark for ‘three-dimensional puzzles’ in class 28.

In 2006, Simba Toys, a German toy manufacturer, filed an application for a declaration of invalidity of that mark pursuant to Article 51(1)(a) in conjunction with (inter alia) Article 7(1)(e)(ii) of Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, which provides that signs “which consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result” shall not be registered.

Simba Toys essentially argued that the grid structure on each surface of the cube reflects the rotating capability of the individual elements of the cube and is therefore necessary to obtain a technical result.

Both EUIPO and the General Court dismissed this argument, considering that the argument was based on the knowledge of the rotating capability of the cube, whereas that capability does not result from the grid structure as such but, at most, from an invisible mechanism internal to the cube. According to the General Court, this invisible mechanism should not be included in the analysis of the functionality of the mark, because that would not be consistent with the requirement that any inference must be drawn as objectively as possible from the shape in question, as represented graphically, and with sufficient certainty. On this basis, the General Court took the view, as did the Board of Appeal, that the grid structure on each surface of the cube at issue had the effect of dividing visually each surface of that cube into nine equal square elements, which could not constitute a technical function.

Simba Toys appealed the judgment of the General Court to the ECJ.

The judgment of the ECJ

The ECJ first of all establishes that it has not been contested that the essential characteristics of the shape at issue are a cube and a grid structure on each surface of the cube and that it must therefore be examined whether these characteristics perform a technical function.

The ECJ then recalls, with reference to Lego Juris v OHIM (C‑48/09), that “in order to analyse the functionality of a sign for the purposes of Article 7(1)(e)(ii) of [Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark] - which concerns only signs which consist of the shape of the actual goods - the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods concerned” (paragraph 46).

For this reason, “the General Court should have defined the technical function of the actual goods at issue, namely a three-dimensional puzzle, and it should have taken this into account when assessing the functionality of the essential characteristics of that sign” (paragraph 47).

The ECJ explains that the analysis of the technical function of a shape mark cannot be made solely on the basis of its graphic representation without using additional information on the actual goods  concerned. In this regard, the ECJ refers to Lego Juris v OHIM (C‑48/09), Philips (C‑299/99) and Pi-Design and Others v Yoshida Metal Industry (C‑337/12 P to C‑340/12 P) as examples of cases in which the competent authorities would not have been able to analyse the shapes concerned without taking account of the function of the actual goods at issue (paragraph 50).

In this context, the ECJ emphasizes that the fact that Seven Towns did not append to its application for registration a description specifying that the shape at issue had a rotating capability, “cannot preclude account from being taken of the technical function of the actual goods represented by the sign at issue for the purpose of examining the functionality of the essential characteristics of that sign, as the proprietor of that mark would otherwise be allowed to broaden the scope of the protection arising from the registration thereof to cover every type of puzzle with a similar shape, namely any three-dimensional puzzle with cube-shaped elements, regardless of the principles by which it functions” (paragraph 52).

To conclude otherwise would run contrary to the objective pursued by Article 7(1)(e)(ii) of Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark “to prevent an undertaking from being granted a monopoly on technical solutions or functional characteristics of a product” (paragraph 53).

Therefore, when examining the functional characteristics of a sign, the competent authority must carry out “a detailed examination that takes into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of application for registration” (paragraph 49), taking account also of “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” (paragraph 51).

On the basis of these considerations, the ECJ annuls the judgment of the General Court.