The European Court of Justice ended a decade-long trade mark battle when it declared that the registered 3D trade mark of the Rubik’s Cube shape was an invalid trade mark.

Forty years ago, Erno Rubik from Hungary invented the colourful puzzle that has left people all over the world scratching their heads. Since the 1970s, Rubiks Brand Ltd has registered trade marks around the world for both the name and the shape of the product. In the European Union, the three-dimensional shape of the Rubik’s Cube has been registered as a trade mark since 1999.

German toymaker Simba Toys challenged the registration of the 3D mark on the basis that the technical function behind the toy warranted a patent, rather than trade mark protection. Over ten years, various European Courts handed down conflicting decisions until finally in November 2016, the European Court of Justice ruled in favour of Simba Toys.

It’s now worth asking whether Rubik’s Brand Ltd’s three Australian trade marks (528156, 707483, and 1302648) are also vulnerable to removal. The word ‘Rubik’s’ has been registered since 1990, with the shape trade marks registered in 1996 and 2009.

Can Rubik’s Cube Trade Marks be Challenged?

Under the Trade Marks Act 1995 (Cth) (the Act), a person can apply to remove a trade mark from the register in certain circumstances. Relevantly, section 24 of the Act applies when trade marks have become commonly associated or generally accepted as describing the goods or services. This may happen to goods or services where the trade mark owner may have registered the trade mark before it became a well-recognised sign. A name or a sign may be distinctive and unique at the time of registration, and so it is accepted by IP Australia. Years later, the brand may have been so successful that the general public use the term or the sign to describe all brands of the good and services.

Section 24 then states that if a trade mark consists of or contains the now-common sign, then the trade mark owner does not have the exclusive right to use the mark. They can still use the trade mark, but cannot enforce any rights against traders using a similar mark in relation to the same goods or services. Further, the owner no longer has the right to authorise others to use the mark.

Under section 87 of the Act, the Registrar or a court may decide to either:

  • Cancel the registration of the trade mark;
  • Remove the trade mark; or
  • Allow the trade mark to remain on the Registrar subject to certain exclusions or limitations.

For example, in the early 1900s, ‘Pyrex’ was a registered trade mark in relation to glassware. The trade mark owner took action against a competitor who started using the name ‘Agee Pyrexware’ and the competitor retaliated by questioning the validity of the trade mark. The Supreme Court of Victoria decided that since its registration seven years earlier, the trade mark had become ‘common and convenient’ name for the product and had become a descriptive term for the goods. Through widespread use of the term, the trade mark was no longer considered distinctive – a requirement for registration. The follow endorsement attached to the original (and since cancelled) Pyrex trade mark:

“The registered Proprietor herein disclaims any right to the exclusive use of the word “PYREX”.

This extends beyond just product names – section 24 also applies to a ‘sign’ which the Act defines as including letters, words, brands, labels, tickets, shapes, colours, sounds or scents.

Are the Rubik’s Cube Trade Marks Vulnerable?

If someone challenged the Rubik’s Cube trade marks on the basis of sections 24 and 87, the Registrar or court would need to consider whether the name ‘Rubik’s’ has become a descriptive term for the logic puzzle. That is, whether the shape of the cube if no longer distinctive.

In Blu-Ray Disc Association [2011] ATMO 51 (17 June 2011), the Registrar considered the name ‘Blu-Ray’ to have been an invented expression at the time it was first introduced (2002-2004), and therefore capable of distinguishing the goods. The Registrar in considering whether ‘Blu-Ray’ had become descriptive over time and was no longer capable of distinguishing the goods stated that:

“Occasional use by traders of the Australian public in an unapproved form would be insufficient to determine that a term or expression has moved into common parlance”.

Rubik’s Cube puzzles are popular in Australia, and even knock-offs are referred to as ‘Rubik’s Cubes’. It would be reasonable to suggest that both the name and the shape are no longer a symbol used in branding, but rather a description of the type of puzzle. If this is the case, the shape or name is no longer used as a ‘badge of origin’, but acts as a description of the goods.

What Would Happen if They Were Challenged or Removed?

Trade marks are valuable intellectual property for businesses. Without the exclusive right to use a trade mark, competitors are free to use similar marks for their own products. This means that the licence and distribution arrangements that Rubiks Brand Ltd currently has in place may decrease in value, as the license of the trade mark does not carry the same weight that it did previously.

Ironically, where a trade mark owner has the exclusive right to a name and by extension, product, it may be their monopoly over the sign that sees their goods synonymous with the mark. Effective marketing and branding of a lesser known product can result in the public recognising the sign as a description of the product itself, not just the trader who provides the product.

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If you have any questions about protecting your intellectual property or registering your trade mark, get in touch with our IP lawyers on 1300 544 755.

Dhanu Eliezer

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