THE TRADEMARK BATTLE OF THE RUBIK'S TUBE

The Rubik's Tube. Photo: Keystone USA-Zuma/Rex Features

The Rubik's Cube is one of the most celebrated brain-teasing puzzles which has enjoyed dominance for over 40 years with its unique 3D format. It was invented in 1974 by Prof Ernő Rubik, a Hungarian sculptor and architect, and has sold over 350million cubes worldwide. It was previously sold as the 'Magic Cube' from a toy shop in Budapest before being renamed and launched worldwide in 1980. With its unique rotating capability, the NPD Group reports that it became the third bestselling game or puzzle in the UK in 2016. It has also been featured in many pictures and movies as the toy of the 'smart folk', young and old, as it stimulates the mind in many ways. However, the company was unsuccessful at the European Court of Justice (ECJ) in a crucial trademark case over the trademark protection of its unique shape. The ECJ found that that shape was 'insufficient to grant it protection from copycat versions'.

In the UK, the Rubik's tube's IP rights are managed by Seven Towers. In April 1999, the company registered the shape as a three-dimensional EU trademark with the European Union Intellectual Property Office (EUIPO), which was the basis of its protection within the EU. A German firm called Simba Toys challenged the trademark protection in 2006, on the basis that the cube's 'rotating capability' should be protected by a patent and not a trademark. This is because of the element of technicality or functionality. The general court had held in May that the shape 'did not qualify for trademark protection'.

Now the ECJ has ruled that the EU trademark in the shape of the Rubik's Cube is invalid. According to the ECJ: “In examining whether registration ought to be refused on the ground that shape involved a technical solution, EUIPO and the general court should also have taken into account non-visible functional elements represented by that shape, such as its rotating capability.” (via The Guardian)

This ruling has ramifications for the company and its many licensed manufacturers and distributors, who can no longer control under trademark, imitations or counterfeits that are produced with the same or similar shape. Other provisions of law such as copyright, passing off and unfair competition would need to be relied on. 

The President of Rubik’s Brand in the UK, David Kremer, stated:

“We are disappointed by today’s decision by the ECJ. While the Rubik Brand is fortunate in having other trademarks, copyright, passing off and unfair competition protection to rely on which will continue to ensure its exclusivity, this judgment sets a damaging precedent for companies wishing to innovate and create strong brands and distinctive marks within the EU, and is not what European lawmakers intended when they legislated for 3D trademarks. We are baffled that the court finds functionality or a technical solution implicit in the trademark.” (via The Guardian)

It seems the ECJ's ruling is also geared at discouraging monopolies by global brands who seek longer trademark (and sometimes Copyright) protection for certain technical elements of products which can be covered by Patent. If more patents are registered in the alternative, the implication of a limited period of protection may help foster healthy competition and prevent indefinite monopoly by these brands. 

The decision will definitely have a great impact on the toy industry and other companies with 3D EU trademarks. Some may take extra steps to secure their rights under other areas of law. However, from a business perspective, their seeming reluctance to register these elements under Patent is understandable as this will require disclosure of the technical characteristics and how they work, in addition to the issue of limited life. Getting a trademark seems to be a more viable option to protect the vital elements of their creations. These competing interests thus need to be balanced in ascertaining the best option for all parties.