Rubik's Cube: Invisible mechanisms scupper trade mark protection Clare Jackman and Eleanor Denny, Norton Rose Fulbright LLP On 10 November 2016 The First Chamber of the ECJ (the Court) gave the final judgment in the Rubik's Cube trade mark saga. The Appellant (Simba Toys) appealed to set aside the judgment of the General Court in which the action to cancel the Defendant's (Seven Towns) Community Trade Mark (No 162784) was dismissed. The Defendant had registered a 3D sign in class 28, described as a three dimensional puzzle (the Sign). surface. The General Court decided these features could not constitute or signal a technical function based on their conclusions drawn from case law. However, the Court disagreed and instead agreed with the Attorney General that as the Sign consisted of the shape of the actual goods (not an abstract shape) and, following Lego, it was essential the shape must be assessed in light of the technical function of those actual goods. This technical function should be taken into account when assessing functionality of essential features. Furthermore, following Yoshida, the Court stated that when assessing signs a competent authority may carry out "detailed examination" of materials relevant to identifying essential features in addition to the graphical representation of the sign and description. The Court highlighted that following the Philips, Lego and Yoshida cases a competent authority would not be able to analyse the shape purely on the basis of the graphical representation but would instead need to also consider additional information on the actual goods; for example, knowledge of the goods' purpose and/or use and any other IP filings e.g. patent filings in the Yoshida case. (2) Public policy reasoning behind Art 7(1)(e)(ii) The Court stated that the objective of Art 7(1)(e)(ii) is to prevent an undertaking from being granted a monopoly on technical solutions or functional characteristics of a product. The Court was concerned by the fact the sign in this case was registered for three dimensional puzzles and nothing in the description limited this to puzzles with rotational capabilities. The Court stated that simply not mentioning rotational capabilities could not preclude them from being taken into account when examining functionality. Furthermore, the Court stated this broad description would allow Seven Towns to monopolise both rotational and nonrotational 3D puzzles and the Court felt it was contrary to public policy granting such a broad monopoly. Therefore the Court agreed with Simba that the Community Trade Mark should be cancelled as it breached Art 7(1)(e)(ii). Points to take away: (i) This case and those mentioned in the judgments detailed above dealt with signs that comprise the shape of the actual goods they relate to, rather than mere abstract shapes. However, the courts have not clearly defined what would be counted as the actual shape or an abstract shape; for example, in Yoshida a 2D simplistic handle shape was deemed to be a sign in the actual shape of the goods (a knife), albeit only part of those goods. Therefore, while there may be uncertainty as to whether these judgments will apply to a mark if it is not clear if its shape is that of the goods, it appears the courts’ interpretation of what would be deemed to be the shape of actual goods will be broad. (ii) The courts stated "additional information" should be considered beyond the graphical representation and description of a trade mark when assessing function of essential features. However, it is unclear what such "additional information" would include. In Yoshida the court used merely permissive language saying competent authorities "may" carry out detailed examinations. This was followed by the Court in the current case. Furthermore, the courts have not set out clearly to what level of detail the competent authorities must research products before they approve registration. (iii) It has been noted that recently the courts have been reluctant to grant trade mark protection for shape marks, applying more stringent criteria and relying on the point that trade marks should not be used to grant an unlimited monopoly on technical functions for public policy reasons (for example the Kit Kat case and Taxi Cab case). Parties must make sure trade marks are only used to protect their brand and should consider using other IP rights, e.g. patents and design rights, if they are more appropriate. Simba argued on six grounds why the mark should be cancelled. However, the court only dealt with the ground of appeal based on the General Court’s alleged misapplication of Art 7(1)(e)(ii), which states that signs that consist exclusively of the shape of goods which is necessary to obtain a technical result shall not be registered. Simba argued, under this ground, that the General Court was wrong in determining that the provision only “bites” where technical results may at least be “inferred with sufficient certainty” from the graphical representation of the mark concerned. According to Simba, no such requirement could be inferred from the wording of the provision or from case-law. The Court agreed and stated that the correct application of Art 7(1)(e)(ii) requires that the essential characteristics of the three-dimensional sign at issue be properly identified and assessed in light of the technical function of the actual goods concerned. This implies a need for examiners to undertake a degree of investigation and not just take graphical representations at face value. Below are set out two key points that the Court discussed in this case relating to the application of Art 7(1)(e)(ii). (1) Do the essential features perform a technical function? The conclusion of the General Court was that the essential features of the Sign were the cube shape and grid structure on the 9 ERRATUM In the PENTASA v XENASA article on page 8 of the September edition of LL&P, the mark referred to as XANTASA should of course have read XENASA.