Recent decision of the General Court of the European Union – Trademark protection for the shape of the Rubik’s Cube denied
On July 10, 2024 (Case T-117/23), the General Court of the European Union (GC) once again addressed key questions concerning the protection of three-dimensional trademarks. The focus was on the trademark registrability of the shape of the world-famous Rubik’s Cube. The decision highlights the strict requirements for the protectability of product shapes and provides important guidance on the scope and limitations of trademark rights in the European internal market.
Legal background – Registration of three-dimensional trademarks in the European Union
Definition and conditions for protection
Registration of three-dimensional trademarks within the meaning of the EU Trade Mark Regulation (EUTMR) requires that the applied-for shape possesses the so-called distinctiveness within the meaning of Article 7(1)(b) EUTMR. This means that the sign must be capable of distinguishing the goods of one enterprise from those of others. For product shapes, it is also required that they are not exclusively determined by the nature of the goods themselves (Art. 7(1)(e) EUTMR). The aim is to prevent essential design features belonging to the technical function from being monopolized.
Trademark history of the Rubik’s Cube
In the past, both the European Union Intellectual Property Office (EUIPO) and various courts have dealt with the question of whether the design shape of the Rubik’s Cube enjoys trademark protection. The original registration of the three-dimensional mark in 1999 was cancelled in 2017 after years of examination and several legal challenges. The current legal dispute concerned a renewed attempt by the trademark owner to obtain registration.
The Court’s Decision: No registrability for the Rubik’s Cube shape
Facts and proceedings
In the initial proceedings, the trademark owner applied for registration of a specific cuboid shape with a characteristic diamond pattern. The EUIPO rejected the application on the grounds that the shape lacked distinctiveness and was also technically determined. The legal action brought against this was now dismissed by the General Court of the European Union.
Court’s reasoning
Following a thorough review, the Court upheld the EUIPO’s decision. The primary consideration was that the three-dimensional appearance of the Rubik’s Cube is essentially shaped by its technical function – namely, the ability to twist and rotate the segments. Moreover, the design lacks distinctiveness, as the shape is dictated by its functionality and is not perceived as an indication of origin for a specific company.
The judges emphasized that trademark protection must not lead to the permanent monopolization of technical solutions. Patent law, which is limited in time and intended to promote innovation, serves this purpose. The Court of Justice of the European Union had already clarified in previous rulings that technical function cannot serve as a basis for trademark protection.
Practical significance
The current decision underscores the restrictive approach of European authorities and courts when assessing technical forms as trademarks. It is consistent with the purpose of the Union trademark, according to which only those signs that actually serve as an indication of origin—and not, on a permanent and exclusive basis, general technical solutions—should be protected and withdrawn from competition.
Implications for trademark owners and businesses
Protection of alternative design forms
Companies that create innovative product designs must increasingly recognize that trademark protection for purely technical forms is significantly restricted. In addition to the option of time-limited patent protection, it may therefore be advisable to consider the strategic development of alternative indications of origin and marketing concepts, such as the registration of distinctive word or figurative marks that can claim protection independent of the technical form.
Distinction from other intellectual property rights
The decision also illustrates the risks of an overlapping intellectual property rights strategy. It is always necessary to carefully assess which protection right is most suitable for each innovation. It is also important to avoid that the attempt to register a trademark for technical solutions becomes a risk of competition or antitrust sanctions.
Significance for ongoing and future proceedings
The ruling could also influence other cases that are still pending, in which the registrability of non-functional design features is disputed. Trademark applicants are therefore advised to thoroughly examine, on a case-by-case basis, whether the claimed shape merely serves a technical function or constitutes an independent trademark element.
Conclusion and outlook
The judgment of the GC sends a clear signal regarding the requirements for distinctiveness and technical determination in three-dimensional trademarks. Companies and investors operating in the field of product design or technical innovations are once again provided with guidance for developing their intellectual property strategies within the European market. The subject remains dynamic—especially in light of ongoing technical advances and increasingly globalized markets.
The team at MTR Legal Rechtsanwalt, operating nationwide and internationally in the fields of intellectual property, corporate, commercial, tax, and IT law, closely monitors developments in trademark law for its clients. For in-depth legal questions regarding trademark strategies related to product design or shape marks, the Rechtsanwalt at MTR Legal are happy to serve as contacts.
Source note: The referenced decision concerns the judgment of the General Court of the European Union dated July 10, 2024, Case T-117/23. Status: August 2024. Proceedings may not be concluded at the time of publication.
