CJEU upholds duty to reverse-engineer trade marks in Rubik's cube decision, but what about the actual v abstract test?

A dangerous 
two-dimensional trade mark

The Rubik's cube saga is one of those stories that IP enthusiasts love to talk about at dinners. 

Everyone knows the toy, although not everyone might be interested in its IP angle [how can they?, says Merpel]. 

Besides being an ideal talking point, technical products getting a trade mark application often hit a trade mark law's nerve, ie: what's the value of signs included in trade mark applications when assessing the absolute ground preventing technical features of devices and shapes from becoming trade marks?

The role of the graphical representation included in trade mark applications is to let competitors and bodies in charge of the registration know the scope of the requested protection. 

In theory, owners' exclusive rights are limited to the aesthetic appearance of the sign as represented in the application graphic representation. Thus - according to some - the chance to register a certain sign should be based on the self-contained, easily accessible, and intelligible images that appear in trade mark application. 

On a different note, most trade mark laws around the world prohibit the registration of technical solutions as trade marks. In this respect, not all signs are the same. In fact, certain [special] signs with a higher "degree of difficulty" raise peculiar concerns. Courts break the boundaries of trade mark applications and carry out a comprehensive technical examination of what and how the product corresponding to the sign at stake has been [and, most importantly could be] used for in the real world. 

The duty to avoid trade mark monopolies on technical solutions obliges courts to reverse-engineer graphical signs and investigate the technical angle thereof, also on the basis of the applicant's previous commercial behaviour. This happened in the past with the Lego saga and, more recently, with the decision in Yoshida [see the Kat analysis here], where the Court of Justice of the European Union (CJEU) transformed a two-dimensional and apparently harmless device sign into a dangerous, sharp kitchen knife. 

The sign at stake 
in the CJEU decision

But how far should this technical investigation go?

Back to our cube, in assessing the relationship between the device sign included in the application [on the left] and the technical functioning of the actual product, the General Court (GC) took the view that inferring the existence of an internal rotating mechanism from the graphic representations of that mark would not have been consistent with the requirement that any inference must be drawn as objectively as possible from the shape in question, as represented graphically, and with sufficient certainty  [Case T‑450/09]. 

Accordingly, it concluded that:

"it is entirely possible for a cube whose surfaces or other elements are rotatable not to contain visible separating lines. There is therefore no essential link between (i) such a possible rotating capability, or even any other possibility of moving certain elements of the cube in question, and (ii) the presence, on the surfaces of that cube, of bold black lines or, a fortiori, of a grid structure of the type set out on the graphic representations of the contested mark".

With today's decision in Simba-Toys [Case C‑30/15 P: here], the CJEU overruled the GC's decision. 

In line with the Opinion of Advocate General Szpunar's [on which see here], the CJEU held that the absolute ground forbidding technical trade marks under the [then applicable] Regulation No 40/94 shall be taken very seriously, and that the GC's technical analysis of the sign failed to do so. 

When it comes to signs which consist of the shape of actual goods - the CJEU held - "the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods concerned".

Abstract shape

Such analysis should necessarily "proceed on the basis of the shape" indicated in the trade mark application, but cannot "be made without taking into consideration, where appropriate, the additional elements relating to the function of the actual goods at issue", taking "into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of application for registration". This is mandatory in all cases where, like the one at stake, it would not be possible "to analyse the shape concerned solely on the basis of its graphic representation without using additional information on the actual goods".

Besides the cubic form and the grid structure that characterise the sign included in the application, the General Court should have taken into consideration also non-visible elements of the graphic representation of that shape, ie those allowing the rotating capability of the individual elements in a three-dimensional Rubik’s Cube-type puzzle. 

The circumstance that the applicant requested registration of the contested sign for 'three-dimensional puzzles' in general, without restricting itself to those having 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 three-dimensional puzzle with cube-shaped elements, regardless of the principles by which it functions".

Actual goods

At paragraphs 46 and 47, the CJEU held that Article 7(1)(e)(ii) of the Regulation concerns only signs which "consist of the shape of the actual goods", while it does not apply to "an abstract shape". 

It is not clear what the concept of "abstract shape" shape means. 

One could infer that it is just a notion describing every sign that does not represent the shape of actual goods. Even shapes of actual goods could have an "abstract" nature, though, as far as they allow non-technical uses. Vice-versa, "abstract" signs such as that of Yoshida could apparently become an "actual" good, if the Court so decides. 

When should this "actual v abstract" test take place and on the basis of what criteria? The examination of the absolute ground under Article 7(1)(e(ii) remains pretty abstract, and actually far from settled.