The Rubik’s cube: a shape necessary to obtain a technical result or a distinctive sign?

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.

Product shape and acquired distinctiveness: possible registration of the KIT KAT trademark

On 16 September 2015, the Court of Justice of the European Union (CJEU) delivered its long-awaited judgment (case C-215/14) on the referral for a preliminary ruling made by the High Court of Justice of England & Wales concerning whether it was possible to register the shape of Kit Kat chocolate wafers as a trademark: 

Nestlé had filed an application for registration of the mark with the UK Trademark Office.  However, the Office accepted an opposition lodged by Cadbury and refused the application on the grounds that it had not been sufficiently demonstrated that the mark had acquired distinctive character.  It considered that the shape that had been applied for had three features, as follows:  

• The basic rectangular slab shape; 
• The presence, position and depth of the grooves running along the length of the bar; and
• The number of grooves which, together with the width of the bar, determine the number of ‘fingers’.

According to the UK Office, the first of those features was a shape that derived from the very nature of the goods claimed (with the exception of cakes and pastries), and the other two were necessary to obtain a technical result.

That decision was appealed to the High Court of Justice, which found that there was not enough case-law from the Court of Justice in respect of the issues that had been raised, and therefore made a referral for a preliminary ruling.  In its judgment, the CJEU changes the order of the three questions that had been referred to it, and first of all examines the question concerning the possibility of cumulatively applying the bar to registration of signs consisting of the shape of goods where that shape is imposed by the nature of the product and where it is necessary to obtain a technical result.  The reasoning behind this change of order is that a sign to which that ground for refusal applies can never acquire distinctive character through use. 

In that regard, the CJEU reiterates the legal doctrine established in the recent Hauck judgment, C 205/13, EU:C:2014:2233 (Tripp-Trapp chair), in the sense that the three particular grounds for refusing to register product shapes operate independently of one another. Therefore, in the Court’s view it is irrelevant whether a certain shape could be denied registration on the basis of a number of grounds, and it will suffice for just one of those grounds to be fully applicable to the shape in question in order for registration to be denied.

As the Advocate General had explained in points 65 and 66 of his Opinion of 11 June 2015, what the CJEU had precluded in the Hauck judgment was the possibility of applying the three different grounds for refusal in combination, but not the possibility of applying them cumulatively, provided that at least one of those grounds fully affects the sign in question.

Court of Justice rules on the validity of the three-dimensional Tripp-Trapp trademark

The 18 September 2014 ruling by the Court of Justice of the European Union (CJEU) (C-205/13, "Tripp-Trapp" case) has added definition to the interpretation of specific three-dimensional shapes for registration as trademarks.

Tripp-Trapp is the name given to a children's highchair created by the Danish designer Peter Opsvik and sold by the Stokke company since 1972. The highchair is designed so that the height of the chair can be regulated as the child grows The originality of the design is not disputed, as demonstrated by the fact that the proceedings that prompted the request for a preliminary ruling as well as parallel proceedings in Germany both concluded that the chair in question fulfils the originality requirement for entitlement to copyright protection. However, the issue of trademark rights is a different matter.

As we all know, trademark protection is virtually indefinite, which is why, on occasion, rightholders of industrial designs and even copyright in product shapes may find it attractive to try to perpetuate protection by means of trademarks. Lawmakers were aware of this when the First Council Directive 89/104/EEC to approximate the laws of the Member States relating to trademarks was drawn up to include, under Article 3(1)(e), specific grounds for the refusal or invalidity of signs consisting exclusively of:

- the shape which results from the nature of the goods themselves, or

- the shape of goods which is necessary to obtain a technical result, or

- the shape which gives substantial value to the goods.

As a result, when the German company Hauck GmbH & Co. KG ("Hauck”) began to market its Alpha and Beta chairs using a design that was very similar to that of the Tripp-Trapp chair, Stokke decided to take action on grounds not only of copyright but also of its three-dimensional trademark registered in 1998:

Hauck subsequently filed a countersuit claiming that the said trademark was invalid because the design ensues from product function rather than acting as an indicator of business origin. On appeal the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) decided to stay the proceedings to refer a series of questions dealing with how to interpret the said ground for refusal to the CJEU for preliminary rulings.

Shapes of goods to obtain a technical result: Registrable as trademarks?

The CJEU has recently (on 6 March 2014) issued a judgment in joined Cases C-337/12P to C-340/12P on interpretation of Article 7.1.e. CTMR and the requirements to be assessed in the case of trademarks that may comprise the shape of goods necessary to obtain a technical result.

Yoshida is a Japanese company that secured registration for two Community trademarks for certain types of cutlery in Class 8 and kitchen utensils in Class 21.

CTM 001371244

CTM 001372580

 

In practice the trademarks covered knife handles with concave dents for knives sold by Yoshida, as shown below.

Image downloaded from www.yoshikin.co.jp

  

The patterns of concave dents, also protected by several patents, served the purpose of helping to prevent the knives from slipping out of the user's hand when slicing.

Three companies, Pi-Design, Bodum France SAS, and Bodum Logistics A/S, filed applications with the OHIM for declarations of invalidity of the Community trademark registrations on grounds that they lacked distinctive character and were in breach of Article 7.1.e. CTMR, that is, that the trademarks consisted of the shape of goods necessary to obtain a technical result. After various appeals the matter reached the CJEU, and in its decision the Court first points out that the absolute grounds for refusal laid down in Article 7.1 CTMR are to be interpreted in the light of the public interest and that no company was entitled to a monopoly on technical solutions or product's functional characteristics.

The Court then points out that for proper application of Article 7.1.e CTMR the essential characteristics of the trademark need to be properly identified. Identification of the said essential characteristics requires a case-by-case assessment, taking into account the overall impression produced by the sign on consumers along with the various types of elements making up the sign, while having in mind that there is no hierarchy systematically applicable to the said elements. Furthermore, Article 7.1.e CTMR applies to both two-dimensional and three-dimensional trademarks.

The Court has also ruled that besides the above, it is also appropriate to take into account such other additional aspects as the filing date of the trademark application, to establish whether the grounds for invalidity had effect on that date, and additionally how the trademark has been used in practice since the filing date and whether there are earlier patents in existence. In not doing so the General Court erred in law.

Since the preceding aspects had not been taken into account, the CJEU referred the matter back to the General Court for judgment.

Author:Marta Rodríguez

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