Judgments nº T-601/17 of Tribunal General de la Unión Europea, October 24, 2019

• Resolution Date: October 24, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-601/17

(EU trade mark - Invalidity proceedings - Three-dimensional EU trade mark - Shape of a cube with surfaces having a grid structure - Absolute ground for refusal - Article 7(1)(e)(ii) of Regulation No 40/94 (now Article 7(1)(e)(ii) of Regulation 2017/1001) - Sign consisting exclusively of the shape of goods necessary to obtain a technical result - Article 76(1) of Regulation (EC) No 207/2009 (now Article 95(1) of Regulation 2017/1001) - Second sentence of Article 75(1) of Regulation No 207/2009 (now the second sentence of Article 94(1) of Regulation 2017/1001) - Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001))

In Case T-601/17,

Rubik’s Brand Ltd, established in London (United Kingdom), represented by K. Szamosi and M. Borbás, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being:

Simba Toys GmbH & Co. KG, established in Fürth (Germany), represented by O. Ruhl, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 19 June 2017 (Case R 452/2017-1) relating to invalidity proceedings between Simba Toys and Rubik’s Brand,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins (Rapporteur), President, M. Kancheva and G. De Baere, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 31 August 2017,

having regard to the response of EUIPO lodged at the Court Registry on 20 November 2017,

having regard to the response of the intervener lodged at the Court Registry on 14 November 2017,

having regard to the measures of organisation of procedure of 22 November 2018,

further to the hearing on 23 January 2019,

gives the following

Judgment

Background to the dispute

1 On 1 April 1996, Seven Towns Ltd filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the three-dimensional sign reproduced below:

3 Seven Towns did not claim any particular colour for that mark and provided no description of it.

4 The goods in respect of which registration was sought are in Class 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘three-dimensional puzzles’.

5 On 6 April 1999, the contested mark was registered as an EU trade mark under No 162 784. It was renewed on 10 November 2006 and 14 February 2016. On 12 February 2014, the transfer of the contested mark to the applicant, Rubik’s Brand Ltd, was entered in the EUIPO register.

6 On 15 November 2006, the intervener, Simba Toys GmbH & Co. KG, filed an application for a declaration of invalidity of the contested mark pursuant to Article 51(1)(a) of Regulation No 40/94 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(a) to (c) and (e) of Regulation No 40/94 (now Article 7(1)(a) to (c) and (e) of Regulation 2017/1001).

7 By decision of 14 October 2008, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.

8 On 23 October 2008, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 57 to 62 of Regulation No 40/94 (subsequently Articles 58 to 64 of Regulation No 207/2009, and now Articles 66 to 71 of Regulation 2017/1001), against that decision. In support of its appeal, it alleged infringement of Article 7(1)(a) to (c) and (e) of Regulation No 40/94.

9 By decision of 1 September 2009 (‘the first decision’), the Second Board of Appeal of EUIPO confirmed the decision of the Cancellation Division and dismissed the appeal.

10 The Board of Appeal considered, inter alia, that the registration of the contested mark was not contrary to Article 7(1)(e)(ii) of Regulation No 40/94 (now Article 7(1)(e)(ii) of Regulation 2017/1001), under which signs consisting exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered. In that regard, it observed that it was apparent from settled case-law that the grounds for invalidating a three-dimensional trade mark pursuant to that provision had to be founded only on the examination of the representation of the mark as filed and not on any alleged or supposed invisible features. It stated that, in the present case, the representation consisted of ‘three perspectives of a 3 x 3 x 3 cube, where each square facet [was] separated from neighbouring facets by a black contour’ and that those graphic representations were not suggestive of any particular function, even where the goods concerned, namely ‘three-dimensional puzzles’, were taken into account. It took the view that it did not have to consider ‘the well-known rotating capability of the vertical and horizontal lattices of the “Rubik’s Cube”, and illegitimately read the functionality back into the representations’, before observing that the ‘cubic grid structure’ did not give any indication as to its function, or even if it has any function at all, and that it was impossible to conclude that it could ‘impart some technical advantage or effect in the domain of three-dimensional puzzles’. Lastly, it stated that the shape was regular and geometric and that it did not contain any ‘clues to the puzzle that it [embodied]’.

11 By application lodged at the Registry of the General Court on 6 November 2009, the intervener brought an action for annulment of the first decision. That case was registered as Case T-450/09.

12 In support of its action, the intervener relied on eight pleas in law. The second plea alleged infringement of Article 7(1)(e)(ii) of Regulation No 40/94.

13 By judgment of 25 November 2014, Simba Toys v OHIM - Seven Towns (Shape of a cube with surfaces having a grid structure) (T-450/09, EU:T:2014:983) (‘the original judgment’), the General Court dismissed the action and ordered the intervener to pay the costs.

14 With regard to the second plea, the General Court found that the ‘essential characteristics’ of the contested mark consisted of, on the one hand, a cube, and, on the other, a grid structure which appears on each surface of that cube. It took the view that those essential characteristics did not perform a technical function of the goods at issue. It dismissed inter alia the intervener’s arguments concerning the rotating capability of the individual elements of the cube in question, which are reflected by those black lines, by observing that those arguments were essentially based on knowledge of the rotating capability of the vertical and horizontal lattices of the ‘Rubik’s cube’, and that that capability cannot result from the characteristics of the shape presented, but at most from an invisible mechanism internal to the cube. According to the General Court, the Board of Appeal was right not to have included that invisible element in its analysis of the functionality of the essential characteristics of the contested mark. In that context, it found that inferring the existence of an internal rotating mechanism from the graphic representations of that mark would not have complied with the requirements that any inference must be drawn as objectively as possible from the shape in question, as represented graphically, and must be sufficiently certain. Thus, like the Board of Appeal, it took the view that the grid structure did not perform any technical function, as the fact that it had the effect of dividing visually each surface of that cube into nine equal square elements cannot constitute such a function for the purposes of the relevant case-law. It concluded that the grid structure constituted above all a decorative and imaginative element which played an important role in the shape in question as an indication of origin.

15 By application lodged at the Registry of the Court of Justice on 26 January 2015, the intervener lodged an appeal against the original judgment.

16 By judgment of 10 November 2016, Simba Toys v EUIPO (C-30/15 P, EU:C:2016:849) (‘the judgment on appeal’), the Court of Justice set aside the original judgment and gave final judgment in the matter by annulling the first decision.

17 In support of its appeal, the intervener relied on six grounds. By its first ground, it submitted that the General Court, in paragraphs 50 to 77 of the original judgment, had infringed Article 7(1)(e)(ii) of Regulation No 40/94.

18 The Court of Justice examined only that ground, which it upheld, relying, in particular, on the following considerations:

- the General Court’s assessment that the Board of Appeal correctly identified the essential characteristics of the contested mark as a cube and a grid structure on each surface of that cube is not challenged in the appeal (judgment on appeal, paragraph 41);

- as to the question of whether such essential characteristics perform a technical function of the product, the General Court erred in law by rejecting the intervener’s argument that the black lines and, more generally, the grid structure on each surface of the cube at issue perform a technical function (judgment on appeal, paragraphs 42 to 45);

- in order to analyse the functionality of a sign for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94, which concerns only signs which consist of the shape of the actual...