In a recent decision, the EUIPO First Board of Appeal annulled the three-dimensional trade mark registration of the Rubik's Cube. The case, R 850/2022-1 followed an action by Verdes Innovations S.A seeking the annulment of the Rubik’s Cube 3D trade mark owned by Spin Master Toys UK Ltd on the basis of two arguments: that the graphic representation of the cube did not comply with the legal requirements and that its shape was necessary to achieve a technical result and should therefore not be protected as a trade mark.
The Rubik's Cube, a popular puzzle game invented by Ernő Rubik, has gained worldwide recognition since its introduction in the 1980s. The cube's distinctive shape, black grid structure and six different colours is one of the most famous toy in the world. The cancellation applicant claimed that the shape of the cube fell under Article 7(1)(e)(ii) of Regulation No 207/2009, which excludes from trade mark registration signs consisting exclusively of the shape of goods which is necessary to obtain a technical result. They argued that the essential characteristics of the cube, including its shape, grid structure and colours, were all necessary for the functioning of the puzzle game.
On the other hand, the Spin Masters argued that the shape of the cube was not necessary to achieve the technical result of the puzzle, and that the colours were merely decorative and that alternative shapes could achieve the same result. They also pointed out that the Rubik's Cube was protected by copyright and that the colours of the cube were the result of the designer's choice, showing that it was not a necessary feature of the 3D object, but rather an arbitrary decision.
The EUIPO First Board of Appeal upheld the application for cancellation and declared the Rubik's Cube mark invalid. The three fundamental elements of the toy, the shape of the cube, the black grid and the different colours, were considered essential to Rubik's Cube and necessary to achieve the technical result of completing the puzzle by creating six different coloured surfaces.
In relation to the decorative nature of the colours, the Board of Appeal confirmed that the different colours of the cube were essential to distinguish the different sides and to match all the squares of the same colour on each side of the cube. Therefore it rejected the argument that alternative colours could have been chosen. Lastly, it rejected Spin Masters’ argument that the specific combination of colours of the Rubik's Cube had acquired distinctiveness, and therefore still fulfilled the necessary conditions to be registered as trade mark since it did function as a sign of origin of the products. This was rejected on the basis of Article 52(2) of Regulation Nº 207/2009 which states that the shape of goods which is necessary to obtain a technical result must be declared invalid even if it has acquired distinctive character through use.
In conclusion, the recent invalidation of the Rubik's Cube trademark by the First Board of Appeal of the EUIPO is yet another remined that trade marks cannot be used to limit the technical features of competing products. This decision also clarifies the difference between trade mark protection and other rights such as copyright. While copyright can cover some aspects of the Rubik's Cube, trade marks cannot extend to shapes that are essential to fulfil technical functions.