Authors: Joel Smith, Sarah Burke and Silja Nordmeyer-Andrez (Herbert Smith Freehills LLP)
Simba Toys GmbH & Co KG v OHIM Case T-450/09, 25 November 2014, General Court of the European Union
Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv010, first published online: February 26, 2015
The General Court has dismissed a cancellation action by Simba Toys in respect of the Community trade mark registration for the 3D shape of the Rubik's Cube. The way in which the mark is graphically presented does not involve a technical solution and, therefore, it can be validly registered as a shape trade mark.
Simba Toys sought to invalidate the Rubik's Cube shape mark on eight different grounds under Council Regulation 40/94 on the Community trade mark and the Community Trade Mark Regulation 207/2009 (CTMR). While the CTMR replaced Regulation 40/94 in 2009, the invalidity action had started before the CTMR came into effect, so some of Simba Toys' arguments were based upon the old Regulation and some were under the CTMR.
Simba Toys advanced arguments under Articles 75 and 76(1) of the CTMR saying that the Office for Harmonization in the Internal Market (OHIM) should state the reasons on which it has based its decisions and that it should examine the facts of its own motion, but in proceedings for refusal of registration, it shall only have regard to the facts, evidence and arguments provided by the parties and the relief sought.
Article 7 of Regulation 40/94 contains the absolute grounds for refusal of registration of marks. Simba Toys relied upon all three of the exclusions in relation to shape marks in Article 7(1)(e)(i) to (iii) of Regulation 40/94, which set out that shape marks may be refused if (i) the signs consist exclusively of the shape which results from the nature of the goods themselves; (ii) the signs consist exclusively of the shape of goods which is necessary to obtain a technical result; or (iii) the signs consist exclusively of the shape which gives substantial value to the goods.
Simba Toys also argued that the Rubik's Cube mark was devoid of distinctive character under Article 7(1)(b) of Regulation 40/94, and that it consisted exclusively of signs or indications which may serve to designate a characteristic of the goods under Article 7(1)(c) of Regulation 40/94. Finally, Simba Toys put forward an argument under Article 7(3) of Regulation 40/94, to the effect that OHIM had not considered whether the trade mark had become distinctive for the goods concerned through use.
A Community trade mark (CTM) for the following sign was registered for ‘three-dimensional puzzles’ in Class 26 by Seven Towns Ltd in 1999:
The General Court dismissed Simba Toys' action in its entirety, holding that all eight pleas were unfounded. The CTM for the Rubik's Cube had been validly registered.
Article 76(1) of the CTMR: the General Court found that the Board of Appeal had exhaustively examined the arguments and evidence before it. In any event, following the 2013 case of Fürstlich Castell'sches Domänenamt v OHIM (T30-10), there is no requirement for a Board of Appeal to examine facts of its own motion in invalidity proceedings, if it does not consider such an analysis relevant to the proceedings.
The first sentence of Article 75 of the CTMR: as established by Anheuser-Busch v OHIM (T-191/07) in 2009, the Board of Appeal's reasoning can be implicit and it does not need to consider every point. The General Court held that the Board of Appeal's analysis of the distinctive character of the Rubik's Cube constituted sufficient analysis.
Article 7(1)(e)(i) of Regulation 40/94: the General Court dismissed Simba Toys' claim that the Board of Appeal failed to take into account that the individual features of the mark were dictated by the ‘function’ of the product. It was clear that 3D puzzles can assume a multitude of shapes, and it was in no way essential for 3D puzzles to assume the shape of a cube with surfaces bearing a grid structure.
Article 7(1)(e)(ii) of Regulation 40/94: the General Court considered the 2008 and 2010 decisions in the Lego Juris v OHIM (T-270/06 and C-48/09P) cases in determining the essential characteristics of a sign. The question is not whether the essential features have a technical function, but whether the shape of the goods is ‘technically causal of, and sufficient to obtain, the intended technical result’ (Lego Juris v OHIM, 2008). As the cube per se and the grid structure of the cube constitute the Rubik's Cube essential elements, there was no causal link between the shape and the rotating capability. The General Court distinguished the 2002 Philips case (Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, C-299/09), in which the shape claimed clearly indicated the technical function of shaving.
Article 7(1)(e)(iii) of Regulation 40/94: as Simba Toys' claim related to functional features of the Rubik's Cube and not to a substantial value flowing from the ‘aesthetic aspect’ of its shape, the General Court held that this claim had not been validly established and that Article 7(1)(e)(iii) does not apply.
Article 7(1)(b) of Regulation 40/94: in order to establish the distinctive character within the meaning of Article 7(1)(b), the distinctive character must serve to identify the product in question as originating from a particular company. The General Court affirmed that there is a presumption of validity for registered CTMs, and that it is for the applicant to provide evidence to the contrary. The General Court held that the mere fact that there is a puzzle available on the market which resembles the Rubik's Cube was not sufficient to indicate a lack of distinctive character. The Rubik's Cube has distinctive character which enables consumers to identify the producer of the goods.
Article 7(1)(c) of Regulation 40/94: there is no real link between the Rubik's Cube and 3D puzzles in general. The relevant public is to be assessed by reference to the average consumer and not to professionals in the field. For the relevant average consumer, the bold black lines on the Rubik's Cube do not automatically link to the rotating capability of the Rubik's Cube.
Article 7(3) of Regulation 40/94: the General Court agreed with the Board of Appeal's finding that the Rubik's Cube mark was inherently distinctive. Therefore, it followed that it was not necessary to examine whether distinctive character had been acquired through use.
Shape trade marks offer a limited monopoly. In this case, the mark as registered does not allow the trade mark owner to prevent third parties from marketing all types of 3D puzzles with rotating capabilities. The monopoly is strictly limited to 3D puzzles that have the shape of a cube with a grid structure on its surfaces.
A mark will be unregistrable if the shape of the goods is ‘technically causal of, and sufficient to obtain, the intended technical result’. However, a CTM cannot be refused on the ground that the shape merely incorporates a technical function. The rotating capability of the Rubik's Cube does not result from the black lines or the grid structure but from an internal mechanism (which is not visible in the graphic representation of the mark).
Care should be taken in the way in which shape marks are graphically represented as protection will be limited to the observable features and not necessarily include technical functions, unless such a function is the logical consequence of the respective sign. In this case, the image of a 3D cube did not necessarily imply a rotating function so there was no protection afforded to the trade mark owner for this feature.