The outward
appearance of goods is having an ever more important bearing on the decision of
the consumer to make a given purchase. As a result, the filing of applications
for three-dimensional trademarks, with a view to protecting shapes likely to
influence that decision, has become a common practice.
However,
the registration of marks of this type, consisting of the shape or
representation of a product without anything else, has always been a
controversial issue. The problem lies in striking a balance between granting an
exclusive right to the trademark owner and avoiding the creation of a monopoly
in the marketing of a given product.
From the
prohibition on registration laid down in article 7.1e) EUTMR it follows that
the three-dimensional trademark cannot and must not act as a system for the
protection of technical results. For that purpose there are other more
appropriate legal instruments, such as patents or utility models, whose
limitation in time is essential to the proper functioning of the system for the
protection of inventions.
That
prohibition seeks to draw a line between the trademark and patent systems,
preventing the grant of an exclusive right without limitation in time which
would in practice entail the perpetuation of a monopoly in a technical
solution.
At times,
however, it is not easy to pinpoint those representations whose purpose is to
protect the sign which identifies the business origin of a product rather than
the technical features of that product.
The case of
the “Rubik’s cube”, which has reached the Court of Justice of the EU, relates
to that issue.
In 1999 the
British company Seven Towns Ltd registered EU three-dimensional trademark No.
162784, in the shape of the Rubik’s cube, in respect of “three-dimensional
puzzles” in class 28.
In 2006 the
toy manufacturer Simba Toys GmbH & Co. KG filed an application for a
declaration of invalidity of that trademark. The EUIPO dismissed that
application and Simba Toys then appealed to the General Court.
The
fundamental argument on which the appeal was based was that the mark embodied a
technical function consisting of the rotatable nature of the product and
therefore came under the prohibition of article 7.1e) EUTMR
In a
judgment delivered on 25 November 2014 (case T-450/09) the General Court upheld
the decision of the EUIPO and dismissed the appeal of Simba Toys upon
concluding that:
- The essential characteristics of the mark are, on the one hand, the cube in itself and, on the other, the grid structure on each of its faces. The black lines do not refer in any way to the rotatable capacity of the individual elements of the cube and therefore do not perform any technical function.
- The rotating capacity of the cube (the technical result) is attributable to an internal mechanism not visible in the graphic representations.
- The registration of this trademark does not permit the owner to prohibit third parties from selling any type of three-dimensional puzzle with a rotating capacity. The exclusive right extends only to three-dimensional puzzles in the shape of a cube with a grid structure on its faces.
- The cubic structure differs significantly from the representations of other three-dimensional puzzles available in the marketplace and therefore has distinctive character.
In short,
the General Court held that the representation protected under the trademark
has distinctive features (the black lines and the grid structure they form)
above and beyond the internal mechanism of the cube which cannot, in any event,
be perceived in the graphic representations of the sign.
Simba Toys
then appealed to the Court of Justice (case C-30/15 P) and the Advocate General
recently released his opinion.
The
Advocate General takes the view that the General Court erred in finding that
“the graphic representations of the contested mark do not make it possible to
determine whether the shape in question involves any technical function or, if
so, what that technical function might be. … it cannot be inferred with
sufficient certainty from those representations that the cube in question is
made up of moveable elements and even less that they are rotatable.” He
maintains that although the General Court identified the essential characteristics of the sign, it
failed to analyze the relationship between these and the technical function
inherent in the goods.
Unlike the
General Court, the Advocate General considers that the grid structure of the
cube does not constitute a decorative and imaginative element but performs a
technical function, since it divides the movable elements of the puzzle
rendering them rotatable. He stresses that, when analyzing the functional
elements of a shape, the competent authority is not required to restrict itself
to information arising from the graphic representation but must, where
necessary, also take account of other relevant information. It is for this
reason that he finds that the sign consists of the shape of a product which
only performs a technical function, without the addition of significant
non-functional elements, that shape being the one needed to permit the rotation
(the technical result) of the individual elements which the product in question
(the puzzle) comprises.
Let us recall
that the prohibition laid down in article 7.1e) EUTMR, relating to shapes
resulting from the very nature of the goods, serves to prevent an undertaking
from using trademark law to obtain a perpetual monopoly in a category of goods.
The aim is to ensure that there may be freedom of competition in the
marketplace by thwarting possible attempts at the appropriation of the shape of
a product which, through its very nature, must have that shape.
The
Advocate General concludes that, since the Rubik’s cube contains no arbitrary
or decorative characteristics, it ought not to be registered as a trademark, as
significant restrictions would otherwise be imposed on the freedom of other
economic operators to offer for sale goods characterized by the same or even a
similar functionality.
He adds
that the fact that the trademark proprietor did not append to its application
for registration a description of the way in which the puzzle works allows the
scope of the protection arising from the registration to take in every type of
puzzle with a similar shape, regardless of the principles by which it
functions, thus enabling the proprietor to extend its monopoly to the
characteristics of goods which perform not only the function of the shape in
question but also other, similar functions.
We shall
have to wait some months for the Court of Justice to deliver its judgment. Then
we shall learn whether the Rubik’s cube is to remain registered as a trademark
or not.
N.B. For a commentary about the final decision, you can go here
N.B. For a commentary about the final decision, you can go here
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