In Simba Toys GmbH & Co KG v European Union Intellectual Property Office, the Court of Justice of the European Union (CJEU) discussed the legal criteria relevant to determining whether a trademark is functional so that it should be invalidated.

The appellant, Simba Toys GmbH & Co KG, sought to invalidate a trademark for the graphical depiction of the Rubik’s Cube (the Trademark), a three-dimensional cube divided by black lines.  The primary argument was that the mark merely depicted the popular rotating puzzle game and therefore was necessary to obtain a technical result.  By extension, allowing the mark to remain registered would give the holder a patent-like monopoly over the market for “magic cubes”.

This case turned on Article 7 of Regulation No 40/94, which sets out the types of marks that are not to be registered as community trademarks. In particular, Article (7)(1)(e)(ii) states that a mark shall not be registered if it consists “exclusively of…the shape of goods which is necessary to obtain a technical result…”

Both the European Union Intellectual Property Office (EUIPO) and the EU General Court had rejected the application to invalidate the existing trademark on the basis that the grid structure represented on the Trademark did not on its own show the functional rotating aspect of Rubik’s Cube.  The General Court reasoned that the functionality assessment of a trademark must be done as objectively as possible from its actual depiction in the registration.  Under this standard, the horizontal and vertical lattices on cube did not indicate the existence the “internal rotating mechanism”.

In coming to its decision, the CJEU highlighted that the functionality assessment requires that the essential characteristics of a shape be assessed in the light of the technical function of the actual goods concerned, in this case a three-dimensional puzzle.  Courts may consider additional material when considering the essential characteristic of a sign in addition to descriptions and graphical representations included with the registration.  By extension, the rotating capabilities of the cube did not necessarily need to be detailed in the filing for them to be considered in the functionality assessment.  The court agreed with the appellants that permitting the Trademark would broaden the scope of protection to cover every type of three-dimensional puzzle with cube-shaped elements.

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