Harbottle & Lewis' Jeremy Morton looks at why a recent advisory trademark ruling regarding the Rubik’s Cube presents a “massive blow” to its UK owner, Seven Towns.
Seventeen years on from registering the Rubik’s Cube shape as a European trademark, its owners have been told by the EU Court of Justice that it is probably invalid and “contrary to public policy”.
The Advocate-General’s Opinion is advisory-only, but likely to be followed when the Court eventually issues its final judgment. This is a massive blow to UK company Seven Towns, which holds the rights and whose CEO originally introduced the product to the world.
Ernö Rubik created the first prototype of his Magic Cube in 1974. It was shown at the 1979 Nuremberg Toy Fair, and launched internationally as Rubik’s Cube in 1980. Children today still love it. And so do copycat competitors.
Why is this case important?
It’s all about product designers extending monopolies in intellectual property, potentially forever. The Advocate-General doesn’t like that.
Both Rubik and other inventors around the world sought patent protection for the cube’s technical features early on. But patents only last 20 years, and they have now expired. That’s problem number one when it comes to blocking copycats.
Similarly, registered designs (which protect the distinctive shape and decorative appearance of products), only last 25 years. Industrial, non-artistic products also do not usually benefit from the longer term of copyright protection, which is aimed at art, literature, craft design and so on. But a trade mark registration can last forever (the Bass beer triangle logo was the first to be registered under the UK’s Trade Marks Act 1875, and is still on the register).
What if the distinctive, instantly recognisable shape of the Rubik’s Cube could enjoy the same kind of protection?
The European Community Trade Mark Regulation of 1993 enabled a wide range of ‘marks’ to be registered across the EU, including the shape of goods. But there are common-sense constraints: it is not possible to register a mark consisting exclusively of a shape resulting from the nature of the goods themselves, or a shape that is necessary to obtain a technical result.
Also excluded are shapes that ‘give substantial value to the goods’. On these grounds, LEGO has been refused trade mark registration for the shape of basic LEGO bricks.
Seven Towns succeeded in registering the shape of the Rubik’s Cube as a European trade mark in 1999. Perhaps surprisingly, an attack on that registration by Simba Toys of Germany, citing the technical nature of the design features, was dismissed by the EU General Court in 2014. Simba’s appeal from that rejection now looks like succeeding, apparently sweeping away Seven Towns’ monopoly rights.
It is essential for European businesses that we gain clarity on these issues.
In a related judgment that was widely reported last summer, LEGO succeeded in registering Minifigures’ three-dimensional features as trade marks despite opposition by British competitor Best-Lock. That was also a decision of the CJEU. Arguably the Rubik’s Cube shape has more of a functional feel to it.
The CJEU must now reconcile these decisions and provide clear guidance.