The European Court of Justice ('ECJ') has decided that the Rubik Cube shape cannot be a valid registered trade mark.

The shape of this well-known best seller puzzle toy had been registered as an EU trade mark from as long ago as 1999. The registration was challenged by a third party toy manufacturer competitor in 2006.

This latest and final decision was the last in a series of battles fought since then through the European system for registration of marks. Indeed, it overturned a previous decision of the EU General Court which had dismissed the 3rd party challenge.

Registered trade marks have been available for the 3D shape of products for some time now but have proved notoriously difficult to obtain and maintain, as recently demonstrated by the Kit Kat decision of the High Court last January where Nestle was held unable to trademark the shape of its four fingered chocolate bar.

These difficulties are because registered trademarks cannot be granted over a shape which is necessary for the relevant goods to be able to perform a technical function. Thus they cannot be used to stop 3rd parties using a technical solution (not otherwise protected) which necessarily incorporates a particular shape. Otherwise a shape trade mark monopoly could block use of such technical solutions.

Trademarks are intended to act as an aesthetic sign/guarantee as to origin and provenance of goods or services. They are not meant to cover functional aspects of products. There are other forms of IP which can do that such as, most obviously, patents. One other key difference between patents and trademarks is that patents can only last generally a maximum of 20 years whereas trademarks can be renewed forever. Thus without these restrictions on their grant trademarks could provide an eternal monopoly over a technical solution which could not be justified in terms of public policy.

The technical function here under debate was the rotating capability of the cube. The trade mark, as registered, covered 3D puzzles and not just those restricted to ones with such a rotating capability.

The ECJ seems to be saying that the trade mark should have been limited to covering puzzles not just of that shape but including that rotating function. The rationale was that if it was not, this would mean that the owners of the mark would have an unfair monopoly over all cube shaped 3D puzzle games. In making its assessment, the ECJ looked beyond the actual graphic representation of the registered trade mark i.e. the cube into its "invisible technical qualities".

In so doing, the court effectively reverse engineered the graphical sign and looked into the functional features of it which were not depicted in the trade mark registration itself. The ECJ essentially decided that even if the graphical representation of a trade mark does not specifically show a technical function, it is none the less entitled to take the reality of how that mark might function in use as a shape into account.

This decision does not mean that the Rubik cube has no IP protection left and it will no doubt have other IP rights such as trademarks in the name itself and goodwill in the name, design and packaging. It does however mean that other third parties are now able to manufacture and sell such a puzzle of this shape although they cannot call it a Rubik Cube or copy its appearance and get up. It thus opens up the possibility of emulating the same cubic shape for puzzles.

No doubt other players in the toy and game industry will be looking at their 3D trade mark registrations in light of this case to verify just how robust or not those registrations might be in the event of third party challenge.

Perhaps some will view this is as a puzzling decision. It may well make invalidity and opposition challenges more complicated in future as extrinsic evidence of use/invisible features of the registered sign may come into the equation. However it is really not surprising given previous approaches of the courts and the wish to ensure that IP rights do not unfairly inhibit 3rd parties use.

This was a final decision in this case and businesses will need to bear it in mind in terms of shaping applications and validity of their existing registrations.