The Court of Justice of the EU (CJEU) has recently confirmed that the bar for registering 3-D trademarks where they represent actual goods remains high. It has overturned earlier decisions both of the EUIPO and of the General Court and decided that Seven Towns’ European Union Trademark No. 162784, being a three-dimensional representation of a Rubik’s Cube, registered in respect of “three-dimensional puzzles”, should be annulled.

EU trademark law permits the registration of 3-D or ‘shape’ marks, even of the goods themselves, subject to the usual criteria of distinctiveness, but with the specific proviso under Article 7 that signs which consist exclusively of the shape, or another characteristic of goods which is necessary to obtain a technical result, should not be registrable.

The representation of the mark comprised three views of the well-known cube in its ‘solved’ state; one in profile showing a single face of nine individual elements all of one colour, and two perspective views each showing three of the overall faces in different colours. Each face comprised the nine same-colour elements divided up by grid lines – like a noughts and crosses puzzle. No description or picture was provided of the method of operation.

In the decision of the General Court under appeal, the General Court had looked only at the representations as filed. These do not show any moving or rotatable parts and so it rejected the claimants’, Simba Toys, claim that the grid lines that were clearly shown divided the movable elements of the puzzle and performed a technical function. The Court did not think it appropriate to speculate about features that were not apparent from the representations.

The claimants appealed to the CJEU, who disagreed. They said that in order to analyse the functionality of a sign where that sign consists of the shape of the goods, the essential characteristics of the shape have to be assessed in the light of the technical function of the goods. This follows the well-known “Lego brick” judgment a few years ago. In the view of the CJEU, the General Court interpreted the criteria for assessing technical function too narrowly and should have taken the grid elements and hence non-visible functional elements into account. Not to do so also means that the proprietor of the mark would effectively be granted a perpetual monopoly over the shape embodying a technical solution. Such situations are increasingly being viewed as anti-competitive and not the function of trademark law.

The case will now be remitted back to the EUIPO where reconsideration of the matter on the basis of the findings set out by the Court will take place. It is difficult to see where it might go. Meanwhile, as in the Lego brick scenario, the proprietors of rights to the Cube will have to try to rely on other forms of IP available to them to ward off competition. They claim to own other trademarks and rights which will assist them but after over 30 years of considerable commercial success it will take some imagination to come up with something new.