There's a way to do it better - find it.

(Thomas A. Edison)

Rubik 2: The technical function in the assessment of shape mark registrability
星期二, 20 12月 2016 10:28

Rubik 2: The technical function in the assessment of shape mark registrability

Marina Lanfranconi

The Court of Justice seems to have arrived at a landing point in the dispute concerning the shape mark of the famous Rubik’s Cube. With the sentence C-30/15 of November 10, 2016, the Court welcomed the complaint presented by Simba Toys regarding the registrability of the shape mark of the well-known cube.  The sentence acknowledges public interest and seeks to avoid that trademark laws could allow a company to obtain a monopoly on technical solutions or functional characteristics of a product, as established in article 7, paragraph 1, letter e), c. Regulation CE 207/2009 prevents trademark registrability for signs consisting exclusively “of the shape of the product which is necessary to obtain a technical result,” or – as widely interpreted – for all those signs that would constitute a monopoly on technical characteristics of the product.

The ruling will invalidate the previous sentences of the EUIPO and of the EU Court (our previous comment).  In particular, the EU Court had found no grounds for refusal to register the mark and upheld the protectability of the cube shape as a trademark by stating that, in examining the technical function of the essential characteristics of the trademark (consisting of the grid structure present on all sides of the cube) it was necessary to begin from the graphic representation of the shape in question, and not consider necessarily the additional elements that a third party “objective observer” – would not be capable of perceiving in a precise way for analysis of the single designs of the disputed trademark.  The first among these elements is the rotating capacity of the individual elements of the three-dimensional puzzle.

The Supreme Court took the opportunity to state that, on the contrary, the technical function can also be considered in the assessment of functionality of the essential characteristics and therefore in the process of registrability of a trademark, even if the owner has not explicitly mentioned so in the application.  The underlying principle is that the owner could otherwise extend protection granted by the registration of that shape mark to any form of puzzle that is characterized by a similar shape, regardless of the function, with monopolistic consequences for all producers of three-dimensional puzzles whose elements represent the shape of a cube in contrast with the public interest underlying the provision.