The Rubik’s Cube trademark saga continues

The Advocate General SZPUNAR issued an opinion in Case C‑30/15 P Simba Toys GmbH & Co. KG v European Union Intellectual Property Office (EUIPO). The case concerns the following:

 On 1 April 1996 Seven Towns filed with the Office an application for registration of the trade mark formed by the three-dimensional sign represented below for ‘three-dimensional puzzles’ (‘the contested mark’) in Class 28:

Image not foundThat mark was registered on 6 April 1999 (No 162784).

On 15 November 2006 Simba Toys filed a request for a declaration of invalidity of that mark. By decision of 14 October 2008, the Cancellation Division of the Office rejected that request. On 23 October 2008 Simba Toys lodged an appeal against that decision.

By decision of 1 September 2009 (‘the contested decision’), the Second Board of Appeal of the Office dismissed the appeal.Dismissing the objection concerning Article 7(1)(e)(i) of Regulation No 207/2009, the Board of Appeal stated that the shape in question does not obviously embody the form of a puzzle and it cannot be considered that the shape results from the nature of the goods themselves. As regards the objection alleging infringement of Article 7(1)(e)(ii) of Regulation No 207/2009, the Board of Appeal found inter alia that the essential features of the shape, and in particular ‘the cubic grid structure’, give no indication as to its function, or even whether it has any function.

 The judgment under appeal

By application lodged at the General Court Registry on 6 November 2009 Simba Toys brought an action for the annulment of the contested decision.

Simba Toys raised eight pleas in law, two of which — the second and third — concerned Article 7(1)(e)(ii) and (i) of Regulation No 207/2009 respectively.

In the judgment under appeal the General Court dismissed the action as unfounded in its entirety.

In paragraphs 27 to 77 of the judgment under appeal the General Court dismissed the second plea, which was divided into eight parts, alleging infringement of Article 7(1)(e)(ii) of Regulation No 207/2009.

Citing the case-law of the EU Courts, and in particular the judgment in Lego Juris v OHIM, the General Court first identified the essential characteristics of the contested mark, holding they are composed of, first, the shape of a cube and, second, the grid structure shown on each surface of the cube .

The General Court then found that it is necessary to assess whether all of the essential characteristics perform the technical function of the goods concerned.

The Court cited paragraph 28 of the contested decision, which had been criticised by the appellant: ‘the grounds for invalidating a three-dimensional trade mark pursuant to Article 7(1)(e)(ii) [of the regulation] must be founded only on the examination of the representation of the mark as filed and not on any alleged or supposed invisible features’; the graphic representations of the contested mark ‘are not suggestive of any particular function, even when the goods, namely “three-dimensional puzzles”, are taken into account’; in making the assessment in this case no consideration should be given to the ‘well-known’ rotating capability of the ‘Rubik’s Cube’ puzzle, and the functionality should not ‘illegitimately’ be read ‘back’ into the representations; the cubic grid structure gives no indication as to its function, or even if it has any structure, and ‘[i]t is impossible to conclude that it may impart some [competitive] advantage or effect in the domain of three-dimensional puzzles’; and the shape under consideration offers ‘no clues to the puzzle that it embodies’.

The General Court dismissed the first, second and seventh parts of the second plea raised by the appellant alleging that the black lines on the grid of the cube ‘are the consequences of a technical function’ consisting in the rotation or other movement capability of the individual elements of the puzzle, or ‘perform that function’ by dividing the individual elements of the puzzle so that they are rotatable (paragraphs 56 to 62 of the judgment under appeal).

Similarly, the General Court dismissed the third and fourth parts of the plea concerning, respectively, the failure to take account of the public interest underlying the provision concerned, and criticism of the Office’s findings in that regard.

The General Court then dismissed the fifth part of the plea, in which the appellant alleged that, as in the present case, in the cases which gave rise to the judgments in Philips and Lego Juris v OHIM — Mega Brands (Red Lego brick) the technical function of the shapes in question was likewise not directly apparent from the signs.

Finally, the General Court dismissed the sixth and eighth pleas concerning, respectively, the lack of any other shapes that could perform the same technical function and the finding that similar three-dimensional puzzles were already known before the contested mark was applied for.

In paragraphs 78 to 83 of the judgment under appeal the General Court dismissed the plea alleging infringement of Article 7(1)(e)(i) of Regulation No 207/2009.

In the other grounds of the judgment the General Court declared unfounded the other pleas raised by the appellant and consequently dismissed the action in its entirety.

 Forms of order sought by the parties

In its appeal Simba Toys claims that the Court should set aside the judgment under appeal and annul the contested decision of the Board of Appeal and also order the Office and Seven Towns to pay the costs of both the appeal proceedings and the proceedings before the General Court.

The Office and Seven Towns contend that the Court of Justice should dismiss the appeal and order Simba Toys to pay the costs of the proceedings.

The General Advocate’s opinion:

In the light of the foregoing considerations, I propose that the Court should set aside the judgment under appeal, annul the decision of the Second Board of Appeal of EUIPO of 1 September 2009 (Case R 1526/2008-2) relating to cancellation proceedings between Simba Toys GmbH & Co. KG and Seven Towns Ltd, and also order the Office and Seven Towns to pay the costs of the proceedings before the General Court and the Court of Justice.

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