International Commercial Law Blog

The EU Court of Justice sets aside the judgment of the General Court and annuls the EUIPO decision which confirmed registration of the shape of the Rubik’s Cube as an EU trade mark

Rubik's cubeIn examining whether registration ought to be refused on the ground that that shape involved a technical solution, EUIPO and the General Court should also have taken into account non-visible functional elements represented by that shape, such as its rotating capability.

At the request of Seven Towers, a UK company which manages, inter alia, intellectual property rights relating to the ‘Rubik’s Cube’, the European Union Intellectual Property Office (EUIPO) registered in 1999, as a three-dimensional EU trade mark, the cubic shape in respect of “three-dimensional puzzles”.

In 2006, Simba Toys, a German toy manufacturer, applied to EUIPO to have the three-dimensional mark cancelled on the ground, inter alia, that it involved a technical solution consisting of its rotating capability, since such a solution may be protected only by patent and not as a trade mark.

EUIPO dismissed its application and Simba Toys thereupon brought an action before the General Court in which it sought annulment of EUIPO’s decision.

By its judgment of 25 November 2014 (see Case T-450/09 Simba Toys GmbH & Co. KG v OHIM), the General Court dismissed the action brought by Simba Toys on the ground that the cubic shape in question did not involve a technical function such as to preclude it from being protected as a trade mark. In particular, the General Court took the view that the technical solution characterising the Rubik’s Cube did not result from the characteristics of that shape but, at most, from an internal and invisible mechanism of the cube.

Simba Toys appealed to the Court of Justice against the judgment of the General Court.

By today’s judgment, the Court points out that Regulation No 40/94 on the Community trade mark, which is applicable in the present case, seeks to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product. In that regard, the Court confirms that the essential characteristics of the shape at issue are the cubic form and a grid structure on each surface of that cube (see The Lego brick is not registrable as a Community trademark).

Next, with regard to the question as to whether registration of the shape in question as an EU trade mark is liable to confer on Seven Towns a monopoly on a technical solution, the Court highlights that it is necessary to examine whether that shape is necessary in order to obtain a technical result.

Contrary to what the General Court found, the Court of Justice notes that, in the context of the present examination, the essential characteristics of the cubic shape in issue must be assessed in the light of the technical function of the actual goods represented. In particular, it was for the General Court also to take into consideration non-visible elements of the graphic representation of that shape, such as the rotating capability of the individual elements in a three- dimensional “Rubik’s Cube”-type puzzle. In that context, the General Court ought to have defined the technical function of the product concerned and have taken this into account in its examination.

Moreover, the Court takes the view that the fact that Seven Towers requested registration of the contested sign for “three-dimensional puzzles” in general, without restricting itself to those that have a rotating capability, cannot preclude account from being taken of the technical function of the actual goods represented by the cubic form in question, and makes it even necessary, since the decision on that request is liable to affect all manufacturers of three-dimensional puzzles with cube–shaped elements.

In those circumstances, the Court sets aside the judgment of the General Court and annuls the EUIPO decision which confirmed registration of the shape in question as an EU trade mark. It will be a matter for EUIPO to adopt a new decision taking into account the findings set out by the Court in the present judgment.

ICC Court amends its Rules to enhance transparency and efficiency

ICC LogoThe International Court of Arbitration of the International Chamber of Commerce (the ICC Court) has announced important amendments to the ICC Rules of Arbitration (the Rules) with the aim of further increasing the efficiency and transparency of ICC arbitrations.

The revised rules will apply from 1 March 2017. They provide that expedited procedure rules will automatically apply to all arbitrations with amounts in dispute below US$2 million and to cases involving higher amounts on an opt-in basis.

Under the Expedited Procedure Rules, the ICC Court will normally appoint a sole arbitrator, irrespective of any contrary term of the arbitration agreement. Awards must be made in 6 months from the case management conference, with extensions granted only in limited and justified circumstances.

Under the Rules there will be no Terms of Reference and the tribunal will have discretion to decide the case on documents only, with no hearing, no requests to produce documents and no examination of witnesses. The quality control on awards – performed by the ICC Court and its Secretariat through the scrutiny of the award – will however be maintained at its long-established highest level. Finally, a scale providing for significantly reduced fees will apply under the Expedited Procedure Rules.

ICC Court President Alexis Mourre said: “This is an entirely new offer to our users. Disputes will now be resolved on a very expeditious and cost-effective manner, providing an effective answer to the legitimate concerns of the business community as to time and costs. These new rules will not only be effective for disputes of a limited value, but also for larger cases if the parties so agree.”

Disputes will now be resolved on a very expeditious and cost-effective manner, providing an effective answer to the legitimate concerns of the business community as to time and costs.

The ICC Court has also introduced a number of other changes to its Rules. They comprise a cutback, from two months to one month, of the time-limit for the establishment of Terms of Reference, in order to streamline the initial phases of the proceedings.

The Rules have also been amended to the effect of allowing the ICC Court to provide reasons for its decisions made on challenges, as well as for other decisions, such as prima facie jurisdictional decisions and consolidations, without having to seek consent of all parties, as under the previous Rules. Mr Mourre said: “Any party will now be in a position to ask the ICC Court to provide reasons for its decisions. This is an increased measure of transparency and accountability to our users.”

The amendments to the Rules were proposed in May by the ICC Court and the Governing Body for Dispute Resolution Services, laid before the ICC Commission on Arbitration and ADR at its Washington session on 17 September 2016, and finally approved by the ICC Executive Board in Bangkok on 20 October 2016.

A copy of the updated rules can be downloaded here.


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