General Court has to take into consideration the non-visible functional elements of the Rubik's Cube
10-11-2016 Print this page
The EUIPO and the General Court should have taken into consideration the non-visible functional elements of the object, such as the rotating capability, when investigating the functional nature of the object. The fact that the proprietor of that mark did not append to its application for registration a description specifying that the shape at issue had such a rotating capability cannot preclude account from being taken of the technical function of the actual goods represented by the sign at issue for the purpose of examining the functionality of the essential characteristics of that sign.
"51. It follows that the General Court interpreted the criteria for assessing Article 7(1)(e)(ii) of Regulation No 40/94 too narrowly, in that it took the view, inter alia in paragraphs 57 to 59 of the judgment under appeal, that for the purpose of examining the functionality of the essential characteristics of the sign concerned, in particular the grid structure on each surface of the cube, the shape at issue, as represented graphically, should have been taken as a basis, without necessarily having to take into consideration any additional circumstances which an objective observer would not have been able to ‘fathom precisely’ on the basis of the graphic representations of the contested mark, such as the rotating capability of individual elements in a three-dimensional ‘Rubik’s Cube’-type puzzle.
52. Furthermore, the fact, as set out in paragraph 55 of the judgment under appeal, that the contested mark was registered for ‘three-dimensional puzzles’ in general, that is to say, without being restricted to those that have a rotating capability, and that the proprietor of that mark did not append to its application for registration a description specifying that the shape at issue had such a rotating capability, cannot preclude account from being taken of the technical function of the actual goods represented by the sign at issue for the purpose of examining the functionality of the essential characteristics of that sign, as the proprietor of that mark would otherwise be allowed to broaden the scope of the protection arising from the registration thereof to cover every type of puzzle with a similar shape, namely any threedimensional puzzle with cube-shaped elements, regardless of the principles by which it functions."
IPPT20161110, CJEU, Simba Toys v EUIPO
C-30/15P - ECLI:EU:C:2016:849
