ECJ HOLDS RUBIK’S CUBE TRADE DRESS REGISTRATION INVALID AS FUNCTIONAL

On November 10, 2016, The European Court of Justice in Simba Toys v. EUIPO and Seven Towns held that the EU trademark registration for the Rubik’s Cube as a 3-D mark was invalid on the ground of functionality.  It determined that functionality of a three-dimensional trademark must be evaluated in the context of the actual shape and the actual goods, and not solely based on what is shown in the registration.

The court found in favor of Simba Toys in an appeal of a decision to uphold the trade dress registration of the “rubik’s cube” three-dimensional grid shape for “three-dimensional puzzles” in Class 28 as valid. It set aside the judgment of the General Court of the European Union, which had previously determined that the shape was not functional. The General Court improperly determined not to look beyond the graphic representation of the mark and not to more specifically consider the actual goods at issue when evaluating the functionality of the essential characteristics of the sign, in particular the grid structure on each surface of the cube. The ECJ held that it was necessary to take into consideration additional circumstances which an objective observer would not have been able to understand solely 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. The ECJ further determined that the broad description of the goods in the registration, namely, “three-dimensional puzzles” and the absence of a description specifying that the shape at issue had a rotating capability would not preclude consideration of the technical function of the actual goods represented.