3D Trademarks are a Puzzle

This week I’m very excited to be speaking at INTA’s program on 3D Printing in New York. I’m tackling the issue of trademarks specifically (considerable pressure, considering it is an INTA event). And without giving my whole lecture away, I just want to point out how strange and tricky the world of 3D trademarks can be.

This past November, the EU General Court ruled in favor of continuing trademark protection for the 3D shape of a Rubik’s Cube. From a purely emotional, non-legal perspective, trademark protection for the shape of the Rubik’s Cube makes lots of sense. The shape is iconic – almost anyone would look at one and recognize it as a Rubik’s Cube. But even iconic 3D shapes can run into the problem of functionality; utilitarian aspects of a product shape typically cannot be the subject of trademark protection.

This decision comes after a nine year dispute: In 1999, the 3D shape of the Rubik’s Cube was registered as a Community trademark with Europe’s Office for Harmonization in the Internal Market (OHIM), an EU-wide registry for trademarks. In 2006, rival toy company Simba Toys filed a request to OHIM to have the mark cancelled because of its utilitarian function as a technical solution. Both the request and an appeal of the request were denied by OHIM. Simba then brought an action before the European General Court to annul OHIM’s decision, and the Court’s decision came down in November 2014.

One reason the trademark should be cancelled, argued Simba, is that the protected element of the shape is purely functional. Simba argued that the black grid lines are simply elements of the rotational action of the toy. The shape of the goods is therefore necessary to achieve its technical purpose as a puzzle toy, and therefore the 3D shape cannot be trademarked.

But the General Court grounded its decision in the trademark registration itself. It found that Simba’s claim of functionality in the grid shape was based on a real-world knowledge of the functioning of the Rubik’s Cube. Someone looking just at the grid pattern would not necessarily know that the shape has a rotational function.And the Court found that the registered trademark does not prevent others from marketing toys with the same rotating functionality. Instead, it prevents others from marketing toys with the same cubical black grid shape. With that distinction made, the Court concluded that the black grid shape was distinctive, non-functional and therefore a valid 3D trademark registration.

Contrary to what the applicant claims, the contested mark may not be relied on by its proprietor in order to prohibit third parties from marketing three-dimensional puzzles that have a rotating capability. As is apparent from the foregoing reasoning, the registration of that mark does not have the effect of protecting a rotating capability which the shape in question allegedly possesses, but solely the shape of a cube the surfaces of which bear a grid structure, which gives it the appearance of a ‘black cage’. That mark cannot in particular prevent third parties from marketing three-dimensional puzzles that have a shape different from that of a cube or that have the shape of a cube but whose surfaces do not consist of a grid structure similar to that on the contested mark or any other similar motif, and prevent those puzzles from incorporating or not incorporating a rotating capability. In that regard, it should be observed that it is apparent from the documents before the Court that, on the date on which the application for registration of the mark applied for was filed, there were already a number of three-dimensional puzzles on the market having a rotating capability and which had shapes different from that of a cube and/or bore motifs different from those of a grid structure.

The General Court also noted general principles regarding distinctiveness in 3D trademarks:

According to established case-law, the criteria for assessing the distinctive character of a three-dimensional trade mark consisting of the appearance of the goods themselves are no different from those applicable to other categories of trade mark…

BUT

Average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark…

That accords with the general difficulty that plaintiffs have had in trade dress infringement cases (including many relating to furniture and fashion), where proving distinctiveness can be as difficult as getting around a functionality doctrine.

But how does this case sit with a number of decisions that have denied trademark protection to the (arguably equally iconic) shape of LEGO blocks? I’ll discuss that question over the next few weeks. I actually think there is the beginning of a logical functionality doctrine here, but the international treatment of functionality has (unsurprisingly) not been consistent.