Following a recent decision by the European Union Intellectual Property Office (EUIPO) to invalidate Spin Master’s Rubik’s Cube trademark in the EU, we explore what this means for three-dimensional trademarks in Canada.
Last week, I watched a guy on the subway solve a Rubik’s Cube between stations. At least, it looked like a Rubik’s Cube—that iconic toy that became a global phenomenon in the early 1980s. It might have been a knockoff. After the recent decision from EUIPO, we may start to see a lot more of those.
Spin Master, the Canadian children’s entertainment and toy company, acquired trademark registrations for the Rubik’s Cube around the world in 2021. In Canada, for example, Spin Master owns trademark registration no. TMA868338 for a trademark consisting of “a three-dimensional representation of a cube design”.
The registration gives Spin Master the exclusive right to sell “puzzles and three-dimensional puzzles” in this form or in a confusingly similar form anywhere in Canada. For now, anyway.
But in early July, the EUIPO invalidated Spin Master’s corresponding trademark registrations in the EU on the grounds that the design had been registered contrary to EU law. Specifically, the EUIPO agreed with a Greek manufacturer of a similar toy that the design was not registerable as a trademark since “the essential characteristics of that shape are necessary to obtain a technical result”. In other words, the features of the cube that were covered by Spin Master’s trademark registrations were considered functional aspects of the puzzle. As such, those features cannot be protected by trademark law since trademark law only protects things (including words, logos and sometimes shapes or colours or even sounds) whose primary function is to identify a trade source. As far as the EUIPO was concerned, the average consumer would see the features of a Rubik’s cube as part of the game itself and not as identifiers of Spin Master as the maker or licensor of the toy.
For all intents and purposes, the relevant law on this point is the same in Canada as it is in the EU. While not binding in Canada or anywhere else outside of the EU, the EUIPO’s decision will likely embolden Rubik’s Cube copycats around the world to market their own colourful cube puzzles that look just like the original.Top of Form
FAQs:
What does the EUIPO decision mean for Canada?
Canadian trademark law has similar rules about functional designs not being eligible for trademark protection. Even though the EUIPO decision isn’t binding here, the ruling could influence arguments made in Canadian courts.
Is the Rubik’s Cube still protected in Canada?
Yes, for now. Spin Master still holds a Canadian registration covering the cube itself, which remain valid unless and until challenged successfully.
Why can’t functional features be trademarked?
Because trademark law is designed to protect indicators of trade source (like logos or brand names), not functional features of a product. If a design is necessary to achieve a technical result, it may be considered functional and thus not registrable.
Could industrial design or patent law protect the cube instead?
Potentially. Functional innovations may be protected under patent law And certain three-dimensional innovations that are not protectable as trademarks may be eligible for industrial design protection.
Resources:
Government of Canada – Three-Dimensional Cube Design — 1491208
