Facts: On 25 January 2013, Verdes Innovations SA filed a request with the European Union Intellectual Property Office (EUIPO) to invalidate European Trademark No. 9975681, which had been registered on 18 January 2012. The contested mark is a three-dimensional mark depicting a cube-shaped object with six faces arranged in three pairs of parallel faces, with each pair perpendicular to the other two. Each pair of adjacent faces is painted in different colors, selected from the following six: red, green, blue, orange, yellow, and white. Each face has a grid structure created by black boundaries dividing the surface into four equal segments. The graphical representation included two three-dimensional images of the mark—one from a side view and one from a front view—illustrating the object from multiple angles. The mark explicitly claimed protection for the six colors mentioned above. It was registered under three separate classes: Class 28 for toys, games, and three-dimensional puzzles; Class 35 for advertising and promotional services in printed media, billboards, and television; and Class 41 for services in the fields of education, training, entertainment, and cultural or sports activities.
The request for invalidity was based on Article 52(1)(a) of Regulation (EC) No 207/2009 concerning Community trademarks, in conjunction with Articles 7(1)(a), (b), (c), and (e) of the same regulation. The main ground was that the mark consisted of a shape necessary to obtain a technical result, and was therefore not eligible for registration under Article 7(1)(e)(ii).
On 25 March 2022, the EUIPO Cancellation Division partially upheld the request, ordering the mark to be invalidated with respect to Class 28 only, while rejecting the request regarding Classes 35 and 41. It concluded that the geometric shape, the grid structure, and the colors applied to the cube’s faces were all essential features required for the puzzle’s function and thus inseparable from it.
On 14 May 2022, the applicant filed an appeal with the EUIPO Boards of Appeal, arguing that the mark embodied a distinctive visual design separate from the puzzle’s technical structure and therefore warranted protection. The applicant contended that the colors, their arrangement, and their presentation in the mark were not essential to the product’s function.
The Board of Appeal rejected the appeal, finding that the mark accurately reflected the structure of a 2×2 Rubik’s Cube puzzle, including key functional features such as the grid division and the use of colors to differentiate the cube’s segments.
A further appeal was submitted to the General Court of the European Union. In its judgment of 9 July 2027, the General Court dismissed the appeal and upheld the findings of the lower instances.
Classification and Legal Consequences:
The Court clarified that the mark had been filed as a three-dimensional mark, not as a two-dimensional mark, a position mark, or a color mark per se. It emphasized that when a three-dimensional mark is submitted, all its distinctive features must be assessed in context, taking into account the perception of the average consumer. The graphical representation clearly illustrated that the mark was not abstracted from the product’s physical shape but directly described it. The Court held that the visual elements—including the grid layout, the different colors, and their placement on each face—were not merely decorative but functionally contributed to the puzzle’s use. The grid enabled accurate rotation of the cube’s rows; the colors distinguished the faces, thereby supporting the puzzle’s solution mechanism; and the overall structure matched the marketed product.
Functional Features and Technical Result:
The Court found that the shape of the product, including all visual features, was required to achieve a technical result. Pursuant to Article 7(1)(e)(ii), such a mark is not eligible for trademark protection, as registration would confer a competitive advantage unrelated to brand origin. The Court noted that even if certain colors were not strictly necessary for technical operation, their functional contribution justified their inclusion under the exclusion clause. The combination of cube shape, grid layout, colors, and configuration constituted a unified functional system. Even if other puzzle designs were possible, this specific configuration was necessary to achieve the intended technical effect.
Design vs. Trademark Distinction:
The Court further rejected the claim that the mark represented a creative or unique visual element deserving of protection. It reiterated that trademark law is not intended to grant a monopoly over technical or design solutions and that functional elements cannot be shielded through aesthetic embellishments or stylized graphics. It concluded that no independent feature existed that could be separated from the functional shape of the product.
Conclusion and Implications:
The appeal was fully dismissed, and the invalidation decision concerning Class 28 was upheld. This judgment underscores the boundaries of registrability for three-dimensional trademarks and reinforces the legal distinction between design protection and trademark rights. It stands as a key precedent in the interpretation of Article 7(1)(e)(ii), particularly for products where visual form and functional operation are closely linked.
