JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
9 July 2025 (*)
( EU trade mark – Invalidity proceedings – Three-dimensional EU trade mark – Shape of a cube with faces having a grid structure and differentiated by their colours – Absolute ground for invalidity – Sign consisting exclusively of the shape of goods which is necessary to obtain a technical result – Article 7(1)(e)(ii) of Regulation (EC) No 40/94 )
In Case T‑1171/23,
Spin Master Toys UK Ltd, established in Marlow (United Kingdom), represented by V. von Bomhard and A. Malkmes, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Verdes Innovations SA, established in Chiliomodi (Greece), represented by R. Kunze, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and E. Tichy-Fisslberger, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 15 November 2024,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Spin Master Toys UK Ltd, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 October 2023 (Case R 850/2022-1) (‘the contested decision’).
Background to the dispute
2        On 25 January 2013, the intervener, Verdes Innovations SA, filed an application with EUIPO for a declaration of invalidity of the EU trade mark which had been registered on 9 January 2008 under number 5696232 following an application filed on 6 February 2007 by Seven Towns Ltd, the predecessor in law to the applicant, in respect of the following three-dimensional sign:
3        The representation of the contested mark was accompanied by the following description:
‘Six surfaces being geometrically arranged in three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs characterised by (i) any two adjacent surfaces having different colours which are red (PMS 200C*), green (PMS 347C*), blue (PMS 293C*), orange (PMS 021C*), yellow (PMS 012C*) and white and (ii) each such surface having a grid structure formed by black borders dividing the surface into nine equal segments; the graphic representation of the mark shows two three-dimensional views of the mark from a side angle and a front view of each of the six sides.’
4        The contested mark also contained a claim in respect of the following colours:
‘Red (PMS 200C), green (PMS 347C), blue (PMS 293C), orange (PMS 021C), yellow (PMS 012C) and white.’
5        The goods covered by the contested mark in respect of which the declaration of invalidity was sought were 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 corresponded to the following description: ‘Toys, games, playthings and jigsaw puzzles, three dimensional puzzles; electronic games; hand-held electronic games.’
6        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 52(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), read in conjunction with Article 7(1)(a), (b), (c) and (e) of that regulation.
7        On 4 June 2014, the Cancellation Division suspended the proceedings before it pending a final decision on the application for a declaration of invalidity filed by Simba Toys against three-dimensional EU trade mark No 162784 representing, in black and white, a three-dimensional puzzle known as Rubik’s Cube, as follows:
8        The General Court gave the judgment of 25 November 2014, Simba Toys v OHIM – Seven Towns (Shape of a cube with surfaces that have a grid structure) (T‑450/09, EU:T:2014:983). The Court of Justice set aside that judgment of the General Court and the decision of the Board of Appeal in the judgment of 10 November 2016, Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849). By Decision R 452/2017-1 of 19 June 2017, the Board of Appeal declared three-dimensional EU trade mark No 162784 invalid on the basis of Article 51(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), read in conjunction with Article 7(1)(e)(ii) of that regulation. The General Court upheld that decision in the judgment of 24 October 2019, Rubik’s Brand v EUIPO – Simba Toys (Shape of a cube with surfaces having a grid structure) (T‑601/17, not published, EU:T:2019:765). The Court of Justice did not allow the appeal against that judgment of the General Court to proceed (order of 23 April 2020, Rubik’s Brand v EUIPO, C‑936/19 P, not published, EU:C:2020:286).
9        On 22 January 2021, the invalidity proceedings in respect of the contested mark were resumed.
10      On 25 March 2022, the Cancellation Division upheld in full the application for a declaration of invalidity of the contested mark on the basis of Article 7(1)(e)(ii) of Regulation No 207/2009.
11      On 16 May 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
12      By the contested decision, the Board of Appeal dismissed the appeal. In particular, it considered that the colours of the squares on each side of the cube were an essential characteristic of the contested mark and formed an integral part of the shape of that mark. It found that the combination of those six different colours was necessary to obtain a technical result. It concluded, in essence, that that mark had been registered contrary to the provisions of Article 7(1)(e)(ii) of Regulation No 207/2009 in respect of all the goods covered by the registration.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
14      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
15      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs of the proceedings before the Court and before the Board of Appeal.
Law
16      In view of the date on which the application for registration in question was filed, namely 6 February 2007, which is determinative for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
17      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision, and by the parties in their written pleadings, to Article 7(1)(e)(ii) of Regulation No 207/2009 and to Article 52(1)(a) of that regulation must be understood as referring, respectively, to Article 7(1)(e)(ii) of Regulation No 40/94 and to Article 51(1)(a) of that regulation, the content of which is essentially identical so far as the present dispute is concerned.
18      Furthermore, since procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present dispute is governed by the procedural provisions of 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).
19      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(e)(ii) of Regulation No 40/94, in conjunction with Article 51(1)(a) of that regulation. That plea is divided into three parts, alleging, first, an error of assessment in the identification of the essential characteristics of the contested mark; second, an error of assessment in the analysis of the functionality of that mark; and, third, an error of assessment relating to ‘jigsaw puzzles’. The applicant submits, in essence, that the contested three-dimensional mark has essential characteristics, namely the combination of six specific colours and their arrangement on the six sides of the cube, which do not consist exclusively of the shape and which, in any event, are not necessary to obtain a technical result.
20      It is apparent in particular from Article 51(1)(a) of Regulation No 40/94 that an EU trade mark is to be declared invalid on application to EUIPO where that trade mark has been registered contrary to the provisions of Article 7 of that regulation.
21      Under Article 7(1)(e)(ii) of Regulation No 40/94, signs which consist exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered.
22      It should be borne in mind that the immediate aim of the prohibition on registering the shapes referred to in Article 7(1)(e) of Regulation No 40/94 is to prevent the exclusive and permanent right conferred by a trade mark from serving to extend, indefinitely, the life of other rights which the EU legislature sought to make subject to limited periods (see, to that effect, judgment of 6 December 2023, BB Services v EUIPO – Lego Juris (Shape of a toy figure with a protrusion on its head), T‑297/22, EU:T:2023:780, paragraph 25 and the case-law cited).
23      The public interest underlying Article 7(1)(e)(ii) of Regulation No 40/94 is to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product (see, to that effect and by analogy, judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 43 and the case-law cited, and of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 43 and the case-law cited).
24      The correct application of Article 7(1)(e)(ii) of Regulation No 40/94 requires that the essential characteristics of the three-dimensional sign at issue be properly identified. The expression ‘essential characteristics’ must be understood as referring to the most important elements of the sign (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 68 and 69; of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 47; and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 102).
25      The identification of the essential characteristics of a sign must be carried out on a case-by-case basis, there being no hierarchy that applies systematically between the various types of elements of which a sign may consist. It may be carried out either directly on the basis of the overall impression produced by the sign, or by first examining in turn each of the components of the sign (see, to that effect, judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 70; of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 48; and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 103).
26      Consequently, the identification of the essential characteristics of a three-dimensional sign may, depending on the case, and in particular in view of the degree of complexity of that sign, be carried out by means of a simple visual analysis of the sign or, on the other hand, be based on a detailed examination in which relevant criteria of assessment are taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 71; of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 49; and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 104).
27      Accordingly, the competent authority may carry out a detailed examination that takes into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of the application for registration (judgments of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 54, and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 105).
28      Therefore, while the identification of the essential characteristics of the sign at issue must, in principle, begin with the assessment of the graphic representation of that sign, the competent authority may also refer to other useful information that allows it correctly to identify those characteristics, such as the perception of the relevant public (judgments of 23 April 2020, Gömböc, C‑237/19, EU:C:2020:296, paragraphs 30, 31 and 37, and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 106).
29      Furthermore, neither the distinctive character of the elements of a sign nor the distinctive character acquired through use of a sign are relevant in determining its essential characteristics for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94 (judgments of 24 September 2019, Roxtec v EUIPO – Wallmax (Representation of a black square containing seven concentric blue circles), T‑261/18, EU:T:2019:674, paragraph 64, and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 108).
30      The essential characteristics of the shape at issue, in the context of Article 7(1)(e)(ii) of Regulation No 40/94, are determined with the specific aim of examining the functionality of that shape (judgments of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 55; of 30 March 2022, Établissement Amra v EUIPO – eXpresio, estudio creativo (Shape of a rebound shoe), T‑264/21, not published, EU:T:2022:193, paragraph 41; and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 109). Thus, that determination must be made objectively, in the light of the technical result obtained by that shape.
31      Once the sign’s essential characteristics have been identified, EUIPO still has to ascertain whether those characteristics all perform the technical function or one of the technical functions of the goods at issue (see, to that effect, judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 72; of 23 April 2020, Gömböc, C‑237/19, EU:C:2020:296, paragraph 28 and the case-law cited; and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 110), that is to say, to analyse the functionality of the sign.
32      In order to analyse the functionality of a sign for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94, the essential characteristics of the shape necessary to obtain a technical result must, as far as possible, be assessed in the light of the technical function of the actual goods represented. Such an analysis cannot be made without taking into consideration, where appropriate, the additional elements relating to the function of the actual goods, even if they are not visible in the representation (judgments of 10 November 2016, Simba Toys v EUIPO, C‑30/15 P, EU:C:2016:849, paragraphs 46 and 48, and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 111).
33      Thus, for the analysis of the functionality of a sign for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94, the Courts of the European Union are not bound solely by the functions visible from the graphic representation of the trade mark, but must take into consideration the other elements of the actual goods, such as the rotation mechanism in the case of the Rubik’s Cube (see, to that effect, judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraphs 85 and 86), the underside of the brick in the case of the Lego brick (judgment of 12 November 2008, Lego Juris v OHIM – Mega Brands (Red Lego brick), T‑270/06, EU:T:2008:483, paragraph 78) and, in respect of a medical dressing, its mode of action (judgment of 31 January 2018, Novartis v EUIPO – SK Chemicals (Representation of a transdermal patch), T‑44/16, not published, EU:T:2018:48, paragraph 37). However, the Courts of the European Union cannot add to the shape of the actual goods elements which do not form part of it (judgments of 3 June 2021, Yokohama Rubber and EUIPO v Pirelli Tyre, C‑818/18 P and C‑6/19 P, not published, EU:C:2021:431, paragraphs 62 to 66, and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 112).
34      While information which is not apparent from the graphic representation of the sign may be taken into consideration in order to establish whether those characteristics perform a technical function of the goods in question, such information must originate from objective and reliable sources and may not include the perception of the relevant public (judgments of 23 April 2020, Gömböc, C‑237/19, EU:C:2020:296, paragraph 37, and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 113).
35      The condition according to which registration of a shape of goods as an EU trade mark may be refused under Article 7(1)(e)(ii) of Regulation No 40/94 only if the shape is ‘necessary’ to obtain the technical result intended does not mean that the shape at issue must be the only one capable of obtaining that result (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 53; of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 46; and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 114).
36      The existence of other shapes which could achieve the same technical result does not constitute, for the purposes of the application of Article 7(1)(e)(ii) of Regulation No 40/94, a circumstance such as to preclude the ground for refusal of registration (see judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 58 and 83 and the case-law cited; judgment of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 115).
37      In other words, Article 7(1)(e)(ii) of Regulation No 40/94 precludes registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution (judgments of 12 November 2008, Red Lego brick, T‑270/06, EU:T:2008:483, paragraph 43, and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 116).
38      In examining the functionality of a sign consisting of the shape of goods, once the essential characteristics of the sign have been identified, it is only necessary to assess whether those characteristics perform the technical function of the goods concerned. Clearly, that examination must be carried out by analysing the sign filed or contested, and not signs consisting of other shapes of goods. The technical functionality of the characteristics of a shape may be assessed, inter alia, by taking account of the documents relating to previous patents describing the functional elements of the shape concerned (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 84 and 85, and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 117).
39      Solely product shapes which only incorporate a technical solution, and of which registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered. Registration as a trade mark of a purely functional product shape is likely to allow the proprietor of that trade mark to prevent other undertakings not only from using the same shape, but also from using similar shapes (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 48 and 56; of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraphs 45 and 46; and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 118).
40      The presence of one or more minor arbitrary elements in a sign, of which all the essential characteristics are dictated by the technical solution to which that sign gives effect, does not alter the conclusion that the sign consists exclusively of the shape of goods which is necessary to obtain a technical result, the presence of non-essential characteristics with no technical function being irrelevant in that context (see, to that effect, judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 51 and 52 and the case-law cited; of 11 May 2017, Yoshida Metal Industry v EUIPO, C‑421/15 P, EU:C:2017:360, paragraph 27 and the case-law cited; and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 119).
41      The fact that an essential element of the mark being contested, which is necessary to obtain a technical result, also has aesthetic value or an unusual character does not preclude the application of Article 7(1)(e)(ii) of Regulation No 40/94 (judgment of 5 July 2023, Wajos v EUIPO (Shape of a container), T‑10/22, not published, EU:T:2023:377, paragraph 45).
42      Furthermore, the fact that the combination of exclusively functional elements brings an overall aesthetic value or contributes to creating an ornamental image of the mark being contested does not preclude the application of the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 (see, to that effect, judgments of 19 September 2012, Reddig v OHIM – Morleys (Knife handle), T‑164/11, not published, EU:T:2012:443, paragraph 40, and of 5 July 2023, Shape of a container, T‑10/22, not published, EU:T:2023:377, paragraph 49).
43      By contrast, Article 7(1)(e)(ii) of Regulation No 40/94 cannot apply when the trade mark applied for, or which is contested, relates to a product shape in which a non-functional element, such as a decorative or imaginative element, plays an important role. In that case, competitor undertakings easily have access to alternative shapes with equivalent functionality, so that there is no risk of impairing the availability of the technical solution. That solution may, in that case, be incorporated without difficulty by the competitors of the mark’s proprietor in shapes which do not have the same non-functional element as that contained in the proprietor’s shape and which are therefore neither identical nor similar to that shape (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 52 and 72; of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 50; and of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraphs 119 and 120).
44      In order to be classified as a major arbitrary element, a non-functional element must be sufficiently significant (judgment of 13 November 2024, Boehringer Ingelheim Pharma v EUIPO – Glenmark Pharmaceuticals Europe (Shape of an inhaler), T‑524/23, not published, under appeal, EU:T:2024:809, paragraph 54).
45      It follows from the foregoing that the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 can apply only if each of the essential characteristics of the sign at issue is necessary to obtain a technical result for which the goods concerned are intended. On the other hand, that ground does not apply where there is a major non-functional element, such as a decorative or imaginative element, which constitutes an essential characteristic of that sign, but which is not necessary to obtain such a technical result (judgment of 6 December 2023, Shape of a toy figure with a protrusion on its head, T‑297/22, EU:T:2023:780, paragraph 121). However, the presence of non-essential characteristics – even those which are non-functional – does not preclude the application of that ground.
46      In summary, the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 applies if all the essential characteristics of the shape in question are functional, unless there is at least one non-functional essential characteristic, and it does not matter whether a non-essential characteristic is non-functional.
47      It is in the light of those principles that, after making two preliminary observations, the merits of the applicant’s single plea in law must be examined.
Preliminary observations
The type of the contested mark
48      In paragraph 51 of the contested decision, the Board of Appeal noted that it was common ground between the parties that the contested mark corresponded to the shape of a three-dimensional puzzle invented by Mr Ernő Rubik and successfully marketed since the 1980s under the name Rubik’s Cube.
49      In that regard, it should be emphasised, at the outset, that the contested mark was filed and registered as a three-dimensional mark or shape mark, and not as a two-dimensional mark or pattern mark applied to the surfaces of a shape, nor as a position mark placed on or affixed to a shape, nor as a colour mark per se, independent of any shape. In essence, the contested mark is a 3x3 version of the three-dimensional puzzle known as a Rubik’s Cube.
50      It is apparent from the case-law that, on filing an application for registration of an EU trade mark with EUIPO, the applicant makes a choice that determines the scope of the protection granted according to the type of mark applied for. EUIPO must therefore take account of the choice made by the applicant in its application and draw the necessary conclusions. Moreover, the requirement of clarity and precision arising from Article 4 of Regulation No 40/94, as interpreted, by analogy, by the judgment of 12 December 2002, Sieckmann (C‑273/00, EU:C:2002:748, paragraphs 46 to 55), has the primary objective of preserving legal certainty by ensuring that the subject matter of the protection granted by EUIPO is clearly determined with regard to the competent authorities and economic operators, in particular the applicant’s competitors. That requirement is all the more imperative where, in accordance with the public interest protected by Article 7(1)(e)(ii) of that regulation, it is necessary to prevent the creation of a potentially perpetual monopoly on a technical solution (see, to that effect, judgment of 27 June 2017, Flamagas v EUIPO – MatMind (CLIPPER), T‑580/15, not published, EU:T:2017:433, paragraphs 35 and 36).
51      In the present case, it is therefore necessary to take account of the choice made by the applicant (or its predecessor in law) to file the contested mark as a three-dimensional mark or shape mark.
The technical result of the contested mark
52      In paragraphs 53 and 54 of the contested decision, the Board of Appeal cited its decision R 452/2017-1 of 19 June 2017 (‘the decision cited’), in which it had examined a trade mark corresponding to a Rubik’s Cube in black and white with the small squares arranged in rows of 3x3 on each face. It had described the intended technical result of the three-dimensional puzzle at issue as that of a ‘game which consists of completing a cube-shaped three-dimensional colour puzzle by generating six differently coloured faces’ and specified that ‘this purpose is achieved by axially rotating, vertically and horizontally, rows of smaller cubes of different colours until the nine squares of each face of the cube show the same colour’ (paragraph 32 of the decision cited).
53      It is appropriate to endorse that assessment of the technical result by the Board of Appeal – which was previously confirmed by the Court in the judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure (T‑601/17, not published, EU:T:2019:765, paragraphs 80 to 83), as the Board of Appeal noted and without this being contested by the applicant – while transposing it mutatis mutandis to the coloured 3x3 version of the Rubik’s Cube, which constitutes the contested mark in the present case.
The first part of the single plea in law, alleging an error of assessment in the identification of the essential characteristics of the contested mark
54      By the first part of the single plea, the applicant complains that the Board of Appeal infringed Article 7(1)(e)(ii) of Regulation No 40/94 by applying it to the contested mark, even though that mark does not consist exclusively of a shape. It maintains that one of the mark’s essential characteristics – as conceded by the Board of Appeal – is the specific arrangement of six specific colours on the six sides of the cube. That arrangement is not an integral part of, and cannot be equated with, the shape of the goods. The applicant complains that the Board of Appeal did not recognise that colour cannot be equated with ‘shape’, contrary to the definition of the concept of ‘shape’ in the case-law of the Court of Justice.
55      More specifically, the first part is divided into a preliminary claim and a main complaint.
The preliminary claim, relating to the essential characteristics of the contested mark
56      By a preliminary claim, which constitutes the assumption on which its main complaint is based, the applicant submits that the surface design in six different colours constitutes an essential characteristic of the contested mark, as confirmed by the Board of Appeal, following the Cancellation Division. The applicant maintains that the third essential characteristic of that mark, in addition to the cube shape and the gridlines, was correctly defined by the Board of Appeal, in paragraph 52 of the contested decision, as being the specific arrangement of the six specific colours at issue.
57      In that regard, the applicant also argues that the graphic representation of the contested mark left no doubt that its subject matter was, principally, the six specific colours arranged specifically, as the colours are clearly specified by means of Pantone codes and their position on the cube is specified by the three-dimensional depictions and by the description cited in paragraph 3 above. In its submission, the fact that the applicant (or its predecessor in law) did not seek to protect primarily the shape as such, but rather the surface design, that is to say the specific colours and their arrangement on the cube, is crystal clear from that description.
58      EUIPO and the intervener dispute the arguments put forward by the applicant.
59      It should be recalled that the correct application of Article 7(1)(e)(ii) of Regulation No 40/94 requires that the essential characteristics of the three-dimensional sign at issue be properly identified (see paragraph 24 above).
60      In paragraph 52 of the contested decision, the Board of Appeal stated that it was common ground between the parties that the representation of the contested mark showed the following essential characteristics:
–        a cube shape;
–        a black grid on each side of the cube formed by squares arranged in rows of 3x3;
–        six different colours of the squares on each side of the cube respectively, namely red, green, blue, orange, yellow and white.
61      As regards the abovementioned third essential characteristic of the contested mark, the applicant’s preliminary claim that the specific arrangement of the six specific colours is an essential characteristic of that mark, as allegedly identified by the Board of Appeal in paragraph 52 of the contested decision, must be rejected. It must be held, as EUIPO contends, that such an identification of the third essential characteristic of that mark is not contained in the contested decision and is, moreover, incorrect.
62      In the first place, it must be observed that the Board of Appeal does not refer to any ‘specific arrangement of specific colours’ as an essential characteristic of the contested mark, but instead highlights the fact that those colours are different and that those different colours appear on each face of the cube respectively. The Board of Appeal’s enumeration of the six colours (red, green, blue, orange, yellow and white) consists solely of a description of the colours which appear on the faces of the cube in that mark. Such an enumeration cannot be interpreted as meaning that the Board of Appeal considered that those specific colours and their specific arrangement constituted an essential characteristic of that mark.
63      This is confirmed by the fact that the Board of Appeal, first, defined the ‘six different colours’ as one and the same essential characteristic and not as six separate essential characteristics, and, second, did not refer to any ‘specific arrangement’ of those colours, contrary to what the applicant claims. The Board of Appeal merely acknowledged that those colours were different on each square of each face of the cube and confined itself to describing those colours in the simplest possible manner.
64      In the second place, it should be recalled that the essential characteristics of the shape at issue, in the context of Article 7(1)(e)(ii) of Regulation No 40/94, must be determined objectively, in the light of the technical result obtained by that shape, and with the specific aim of examining the functionality of that shape (see paragraph 30 above). Moreover, the expression ‘essential characteristics’ must be understood as referring to the most important elements of the sign (see paragraph 24 above), as opposed to minor arbitrary elements (see paragraph 40 above).
65      In the present case, it must be held that both the examination of the individual elements of the contested three-dimensional mark and the examination of the overall impression produced by it, having regard in particular to the fact that such an examination must be carried out in the light of the technical result obtained by the shape at issue and with the specific aim of examining the functionality of that shape, lead to the conclusion that the six specific colours (red, green, blue, orange, yellow and white) placed on the faces of the cube and their alleged ‘specific arrangement’ do not constitute an essential characteristic of that mark.
66      For the following reasons, the six specific colours and their alleged ‘specific arrangement’ must be regarded as being of minor and secondary importance in relation to the cube shape, the grid structure and the differentiation of the faces of the cube, namely the fact that those faces are distinguishable.
67      First, it must be stated that the six specific colours at issue, as claimed, are basic, which suggests that they are of minor and secondary importance in relation to the shape. In view of their basic character, those colours merely perform the function of distinguishing the different faces of the cube by means of what the Court has referred to as a ‘contrasting effect’ (judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 88). Furthermore, such basic colours, in so far as they are not considered to be functional, are not sufficiently significant to be classified as major arbitrary elements (see paragraph 44 above).
68      It follows that the specific nature of those six colours is not an essential characteristic of the contested mark, unlike the fact that they differ and the contrasting effect which that differentiation produces.
69      At the hearing, the applicant submitted that the basic character of the six colours at issue was not apparent from the contested decision. EUIPO contended in response that that basic character was expressly apparent from an assessment carried out by the Cancellation Division in its decision, which the Board of Appeal had endorsed by confirming it. In that regard, it should be borne in mind that, when the Board of Appeal confirms a lower-level decision of EUIPO in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (judgment of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 47). In the present case, it must be pointed out that the Cancellation Division did in fact classify those six colours as ‘basic’ on two occasions on page 20 of its decision.
70      Second, it must be observed, as EUIPO argues, that the alleged ‘specific arrangement’ of the colours on the faces of the cube, relied on by the applicant, does not appear clearly in the graphic representation of the contested mark. Although it is certainly clear from the graphic representation that the colours yellow, green and red, on the one hand, and the colours blue, white and orange, on the other, are ‘adjacent’, it is not, however, clear to which other colours each of those colours is adjacent or what the ‘specific arrangement’ of the colours on the faces of the cube relied on by the applicant would be, as such a ‘specific arrangement’ is not unequivocally apparent from the graphic representation of the contested mark and its description. In fact, the applicant cannot rely on any ‘specific arrangement’ of the colours by means of a clear and unambiguous representation and description of all the colours adjacent to each other, which suggests that the main subject matter of the three-dimensional mark at issue is the cube shape, the grid structure and the colour differentiation on each face of the cube.
71      It follows that the alleged ‘specific arrangement’ relied on by the applicant does not constitute an essential characteristic of the contested mark, unlike the contrasting effect produced by the colour differentiation.
72      Third, contrary to what the applicant claims, it is not ‘crystal clear’ from the description of the contested mark whether the applicant (or its predecessor in law) sought to protect primarily the shape as such or the surface design, or both. Neither the type of the contested mark (three-dimensional), as chosen by the applicant (or its predecessor in law), nor the description of that mark – which begins with ‘six surfaces being geometrically arranged in three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs’ and continues, after the identification of the colours, with ‘each such surface having a grid structure formed by black borders dividing the surface into nine equal segments; the graphic representation of the mark shows two three-dimensional views of the mark from a side angle and a front view of each of the six sides’ – suggests that protection was sought ‘primarily’ for ‘the surface design, [that is to say] the specific colours and their arrangement on the cube’, contrary to what the applicant claims. The description refers specifically to the cube shape (‘three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs’) and the fact that each of those surfaces ‘[has] a grid structure formed by black borders dividing the surface into nine equal segments’. Moreover, it is also not apparent from the file that, in the opposition or infringement proceedings, the applicant (or its predecessor in law) invokes its right to the contested mark only to the limited extent of the six specific colours and a specific arrangement.
73      It follows from the foregoing that the applicant has not demonstrated that the six basic colours placed on the faces of the Rubik’s Cube represented in the contested mark, or their arrangement – which, moreover, is unclear – constituted an essential characteristic of that mark – it being understood that such a characteristic is, in the applicant’s mind, non-functional. The only important element, and therefore the only essential characteristic of that mark with regard to the colours, is the differentiation between the small squares on each face of the cube, which makes it possible to distinguish them and which produces a contrasting effect.
74      It must therefore be held that the essential characteristics of the contested mark are as follows:
–        a cube shape;
–        a grid structure separating 3x3 small squares on each of the six faces of the cube;
–        the differentiation of those small squares on each face of the cube by means of six basic colours (red, green, blue, orange, yellow and white), making it possible to distinguish them and producing a contrasting effect between them.
75      That assessment of the essential characteristics of the contested mark corresponds, in essence, to the assessment of the Board of Appeal in paragraph 52 of the contested decision, which, moreover, does not refer to any ‘specific arrangement’. By contrast, the interpretation put forward by the applicant is not consistent with the general scheme of the contested decision, which, in its analysis of functionality, does not rely either on specific colours or on a specific arrangement. That decision must therefore be understood, in the light of its general scheme, as correctly attributing the status of essential characteristic neither to the six specific colours as such nor to their alleged ‘specific arrangement’, but only to their ability to differentiate by means of a contrasting effect.
76      It must be concluded that the Board of Appeal did not make an error of assessment in finding, in essence, that the differentiation by means of six colours, making it possible to distinguish the small squares on each face of the cube by way of a contrasting effect, constituted an essential characteristic of the contested mark for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94.
77      The applicant’s preliminary claim cannot therefore succeed.
The main complaint, alleging that the differentiation by means of six colours cannot be regarded as forming an integral part of the shape of the contested mark
78      By its main complaint, the applicant submits, in essence, that a colour is not a ‘shape’ within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94. It complains that the Board of Appeal infringed that article by considering that ‘the colours form[ed] an integral part of the shape’ of the goods in question and by concluding on that basis that the contested mark consisted exclusively of the shape of the goods.
79      More specifically, the applicant puts forward five arguments. In the first place, it submits that the marketing of the Rubik’s Cube is not a relevant criterion for inferring that the colours are an integral part of the shape. Moreover, it maintains that, where an essential characteristic is arbitrarily replaceable by any graphic means (for example, letters or numerals) without impacting the shape as defined by its contours, such a characteristic cannot form an integral part of the shape. In the second place, the applicant claims that Article 7(1)(e)(ii) of Regulation No 40/94, in the version applicable in the present case, refers only to signs which ‘consist exclusively of the shape of the goods’, in contrast to the legislative amendment made by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Regulation No 40/94, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), in order to include ‘[other] characteristic[s]’ as well. In the third place, the applicant relies on the definition, provided by the Court of Justice, of the concept of the ‘shape’ of a product, namely its contours, from which it allegedly follows that surface design cannot be equated with ‘shape’ within the meaning of that article. It submits that the Board of Appeal was therefore incorrect in considering that the surface design, being an essential characteristic of the contested mark, formed an integral part of the shape, rather than acknowledging, in line with the case-law of the Court of Justice, that ‘shape’ within the meaning of that provision was defined by the lines or contours which outlined the three-dimensional product, while the colour, like any other possible surface design, is a separate element. In the fourth place, the applicant relies on other rulings and judgments which it considers relevant. In the fifth place, it submits that its interpretation of Article 7(1)(e)(ii) of Regulation No 40/94 does not render that provision ineffective, contrary to the ‘somewhat alarmist’ statements of the Board of Appeal.
80      All in all, according to the applicant, it should be concluded that the six colours and their specific arrangement on the sides of the cube, which constitute an essential characteristic of the three-dimensional sign at issue, do not form an integral part of the ‘shape’ within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94. It maintains that that provision therefore does not apply to the contested mark, as it does not consist exclusively of the shape of the goods.
81      EUIPO and the intervener dispute the arguments put forward by the applicant.
82      In paragraphs 61 to 63 of the contested decision, with respect to the colours of the squares on each face of the cube, the Board of Appeal rejected the applicant’s argument that those colours cannot be considered to be a shape within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94. According to the Board of Appeal, it was clear from the evidence that the shape of the contested mark corresponded to a product which was marketed in colour, as confirmed, for instance, by the image taken from the Wikipedia website, on which both parties relied (see paragraph 108 below). Accordingly, the colours formed an integral part of the shape and could not be excluded for the sole reason that a colour per se did not have a ‘shape’. The Board of Appeal found that, if the applicant’s argument were correct, the addition of a colour, whether essential or merely decorative, to a functional element of a shape mark would suffice to prevent the sign from falling within the scope of the abovementioned article for the sole reason that it could not be considered to consist ‘exclusively’ of a shape. The application of that provision would be effectively limited to trade marks registered in black and white and would no longer ensure its underlying public interest.
83      In paragraphs 64 to 70 of the contested decision, the Board of Appeal also considered that the applicant’s reference to the judgments of 12 June 2018, Louboutin and Christian Louboutin (C‑163/16, EU:C:2018:423), and of 14 March 2019, Textilis (C‑21/18, EU:C:2019:199), was of no avail. According to that board, first of all, those judgments did not concern shape marks, but rather position marks. Next, it was clear from the judgment of 12 June 2018, Louboutin and Christian Louboutin (C‑163/16, EU:C:2018:423), that the Court of Justice had not, in that judgment, examined the question whether or not Article 7(1)(e)(ii) of Regulation No 40/94 applied to shape marks registered in colour. Furthermore, in the judgment of 14 March 2019, Textilis (C‑21/18, EU:C:2019:199), the Court of Justice had not assessed a coloured shape, but rather a coloured two-dimensional figurative mark. According to the Board of Appeal, none of the judgments or rulings relied on by the applicant supported the claim that, in the context of the assessment under Article 7(1)(e)(ii) of Regulation No 40/94, a distinction had to be made between the shape and its colour. It considered that, in the present case, the contested mark was neither a colour per se nor a two-dimensional motif to be applied to the product at issue (a three-dimensional puzzle), but rather consisted of the coloured shape of the product itself.
84      In that context, it must be held that, in the light of the public interest underlying Article 7(1)(e)(ii) of Regulation No 40/94 (see paragraphs 22 and 23 above), as well as the need to preserve the effectiveness of that provision, the concept of ‘shape’ must not be interpreted in an excessively narrow manner, which, in particular, would exclude any coloured shape of goods.
85      In the present case, it must be borne in mind that the contested mark was filed and registered as a three-dimensional mark or shape mark, and not as a pattern, position or colour mark (see paragraphs 49 to 51 above). Having regard to the type of that mark as well as its graphic representation and its description, it must be observed that the third essential characteristic of that mark, namely the differentiation of the small squares on each face of the cube by means of six basic colours, making it possible to distinguish them and producing a contrasting effect between them, is inherent in and inseparable from the shape represented and, as the Board of Appeal correctly pointed out, forms an integral part of that shape.
86      In that regard, it must also be observed, as EUIPO contends, that the addition of six basic colours (see paragraph 67 above), in an unclear arrangement (see paragraph 70 above), to the functional three-dimensional shape, which is clearly defined and represented by the functional lines of the grid, does not preclude the contested mark from being a sign which consists exclusively of a shape, within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94. The possibility that other surfaces might make the Rubik’s Cube more than a shape is irrelevant to the question whether, in the present case, the contrasting effect resulting from the differentiation of the faces (small squares) of the cube by means of basic colours constitutes an essential characteristic of that mark.
87      Those findings cannot be invalidated by the applicant’s arguments.
88      In the first place, as regards the applicant’s argument that the marketing of the Rubik’s Cube is not a relevant criterion, it should be recalled that the essential characteristics of the shape necessary to obtain a technical result must, as far as possible, be assessed in the light of the technical function of the actual goods represented (see paragraph 32 above) and that, while the identification of the essential characteristics of the sign at issue must, in principle, begin with the assessment of the graphic representation of that sign, the competent authority may also refer to other useful information that allows it correctly to identify those characteristics, such as the perception of the relevant public (see paragraph 28 above). It follows that, in addition to the graphic representation of the contested mark, the Board of Appeal was also entitled to take into account the fact that the shape of that mark corresponded to actual goods represented, which were marketed in colour and perceived as such by the relevant public.
89      Moreover, as regards the applicant’s argument concerning the way in which the Board of Appeal would have assessed the shape of the contested mark if there had been, for example, letters or numerals on the surfaces, it must be held that that question is purely hypothetical and that argument must be rejected as ineffective, given that the identification of the essential characteristics of a sign must be carried out on a case-by-case basis (see paragraph 25 above). In the present case, the surface design of the cube merges with its shape and does not in itself constitute an essential characteristic of the sign (see paragraphs 61 to 75 above); rather, it is solely the contrasting effect produced by it which constitutes such an essential characteristic. It is irrelevant whether, in some other specific case, other surface designs would be regarded as a non-functional essential characteristic of another mark.
90      In the second place, as regards the applicant’s argument that the Board of Appeal failed to take account of the legislative amendment introducing the wording ‘another characteristic’ into Article 7(1)(e) of Regulation No 207/2009 (which replaced Regulation No 40/94), it must be rejected as ineffective. The fact that marks containing ‘[other] characteristic[s]’ than shape may fall within the scope of that article, as amended by Regulation 2015/2424, does not necessarily mean that that article, in its previous version, did not cover three-dimensional marks containing colours.
91      In that context, it must be stated, as EUIPO contends, that the insertion of the wording ‘another characteristic’ by Regulation 2015/2424 into Article 7(1)(e)(ii) of Regulation No 207/2009 (which replaced Regulation No 40/94) was not intended to establish that three-dimensional marks in colour henceforth fall outside the scope of application of that provision in its previous version on account of the fact that they contain colours. That legislative amendment was closely linked to the removal of the requirement of graphic representation by Regulation 2015/2424 and to the subsequent introduction of new types of ‘non-traditional’ trade marks into the EU trade mark system. Three-dimensional marks in colour were not introduced by that legislative amendment, but already existed beforehand, with the result that the addition of the wording ‘another characteristic’ did not alter the examination of the functionality of such marks. What matters is whether or not the colour or colours of such a three-dimensional mark are an essential characteristic of that mark, rather than whether they form part of the shape or of ‘another characteristic’.
92      Thus, as the Court of Justice held, in essence, in the judgment of 14 September 2010, Lego Juris v OHIM (C‑48/09 P, EU:C:2010:516, paragraphs 51 and 52), in which Article 7(1)(e)(ii) of Regulation No 40/94 was applicable, the addition of non-essential characteristics with no technical function did not prevent a shape from being caught by that absolute ground of refusal to the extent that all the essential characteristics of that shape performed such a function (see paragraph 40 above). In that case, the red colour of the Lego brick was considered by the Grand Board of Appeal and the General Court to be a non-essential characteristic (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 73 and 74). Likewise, in similar cases, the General Court has confirmed the invalidity of trade marks on the basis of Article 7(1)(e)(ii) of Regulation No 207/2009 prior to its amendment by Regulation 2015/2424 – that is to say, when that provision referred only to ‘signs which consist exclusively of the shape’ – when confronted with colours which were not ‘a shape’ (judgments of 31 January 2018, Representation of a transdermal patch, T‑44/16, not published, EU:T:2018:48, paragraphs 101 to 104; of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraphs 70 to 72; and order of 15 July 2021, Roxtec v EUIPO – Wallmax (Representation of an orange square containing seven concentric black circles), T‑455/20, not published, EU:T:2021:483, paragraphs 51 to 53).
93      In the third place, as regards the applicant’s reliance on the judgments of 12 June 2018, Louboutin and Christian Louboutin (C‑163/16, EU:C:2018:423), and of 14 March 2019, Textilis (C‑21/18, EU:C:2019:199), it must be held, as the Board of Appeal found, that those judgments are irrelevant in the present case, for the following reasons.
94      First, the case which gave rise to the judgment of 12 June 2018, Louboutin and Christian Louboutin (C‑163/16, EU:C:2018:423), is not analogous to the present case, since it concerned a sign consisting of a colour applied to the sole of a shoe, namely a position mark, and not a three-dimensional mark. The Court of Justice held, in essence, that a trade mark which was clearly intended to protect the application of a particular colour to a part of a product, expressly excluding the contours of the product, did not consist exclusively of the shape of goods, within the meaning of Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) (judgment of 12 June 2018, Louboutin and Christian Louboutin, C‑163/16, EU:C:2018:423, paragraph 27). That is not inconsistent with the finding that a shape mark containing colours may, in a particular case, still be considered to consist exclusively of the shape of goods for the purposes of the application of Article 7(1)(e)(ii) of Regulation No 207/2009, prior to its amendment by Regulation 2015/2424, or of Regulation No 40/94 (see, to that effect, judgments cited in paragraph 92 above).
95      Second, the case which gave rise to the judgment of 14 March 2019, Textilis (C‑21/18, EU:C:2019:199), is not analogous to the present case either since, in that judgment, the Court of Justice examined a figurative mark with decorative motifs which was affixed to goods, and not a three-dimensional mark with basic colours.
96      In the fourth place, as regards the applicant’s reliance on other judgments and rulings, they must also be regarded as irrelevant in the present case.
97      First, as regards the judgment of the rechtbank Gelderland (District Court, Gelderland, Netherlands) (Enclosure AP 1), it is sufficient to note, as the Board of Appeal did in paragraph 69 of the contested decision, that the marks relied on by the applicant ‘[did] not seek to protect the shape but only the application of the pattern in question to a specific place of the goods’ (paragraph 4.19 of that judgment). In the present case, by contrast, the claim that the contested mark is intended solely to protect the surface design of the product, namely a ‘specific arrangement of specific colours’, is not apparent from the graphic representation and the description of that mark (see paragraphs 61 to 75 above); rather, what is in issue is a shape registered in colour. Furthermore, national decisions are not binding on EUIPO, as the applicant acknowledges, and, in any event, the Board of Appeal took due account of the abovementioned judgment.
98      Second, as regards the judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure (T‑601/17, not published, EU:T:2019:765), the applicant’s reliance on its findings is not relevant in the present case. First of all, it must be pointed out that that judgment concerned three-dimensional EU trade mark No 162784 for the Rubik’s Cube in black and white, reproduced in paragraph 7 above, and not the contested mark, registered in colour and reproduced in paragraph 2 above. Moreover, in so far as the Court held that ‘the well-known characteristic of the “Rubik’s Cube”, relating to differences in the colours on the six faces of the cube[,] an element which is not visible in the graphic representation of [trade mark No 162784,] could, like the mechanism internal to the “Rubik’s Cube”, which allows the rotation, vertically and horizontally, of rows of small cubes, legitimately be taken into account by the Board of Appeal when assessing the functionality of the two correctly identified essential characteristics of that mark’ (judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 99), it cannot in any way be inferred from this that the addition of six basic colours to the Rubik’s Cube would make it possible for the contested mark not to consist exclusively of a shape within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94.
99      Third, as regards the judgment of 24 May 2023, Glaxo Group v EUIPO – Cipla Europe (Shape of an inhaler) (T‑477/21, not published, EU:T:2023:280), it is sufficient to note that that case concerned the distinctive character of the mark which was at issue, and not its functionality, such that it is not relevant to the present case. Indeed, the examination under Article 7(1)(e)(ii) of Regulation No 40/94 is not governed by the same rules as the assessment of distinctive elements, the purpose of which is to ascertain whether the sign serves as an indication of origin of the goods in the eyes of the consumer, which is not the same as determining the essential elements of a shape (judgments of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 53, and of 30 March 2022, Shape of a rebound shoe, T‑264/21, not published, EU:T:2022:193, paragraph 43).
100    In the fifth place, with respect to the applicant’s criticisms of the Board of Appeal’s assertion – which it regards as ‘somewhat alarmist’ – that Article 7(1)(e)(ii) of Regulation No 40/94 would be rendered virtually ineffective if the addition of a colour, whether essential or merely decorative, to a functional shape rendered that provision inapplicable, it must be stated that the assertion criticised stems from a generalisation on the part of the Board of Appeal and was made in the present case purely for the sake of completeness. A complaint which challenges an assessment made purely for the sake of completeness is not capable of affecting the operative part of the contested decision and must be rejected as ineffective (see judgment of 28 June 2023, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑145/22, EU:T:2023:365, paragraph 113 and the case-law cited).
101    In the light of all of the foregoing, it must be concluded that the Board of Appeal did not make an error of assessment in finding that the contested mark, namely a three-dimensional mark registered in colour, consisted exclusively of a shape within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94.
102    The applicant’s main complaint cannot therefore succeed.
103    Consequently, the first part of the single plea in law must be rejected.
The second part of the single plea in law, alleging an error of assessment in the analysis of the functionality of the contested mark
104    By the second part of the single plea, the applicant claims that, even assuming that the specific colours and the specific arrangement thereof form part of the shape of the contested mark, they are not necessary to obtain a technical result. It submits that, while it is necessary that the six sides of the cube can be differentiated, the way in which this is achieved is not a technical question, but merely an aesthetic one.
105    More specifically, the applicant puts forward four arguments. In the first place, it submits that there are infinite design possibilities in respect of the surface design enabling the six sides of the cube to be distinguished, and that the choice is in no way limited by technical considerations. Therefore, it argues, the contested mark does not confer a monopoly on any shape. In the second place, the applicant relies on the creative process behind the Rubik’s Cube. According to his statement of 25 November 1998 (paragraph 20 of that statement), Mr Rubik chose those bright colours in order to make the cube ‘more exciting’, not to achieve mere distinction. The applicant ‘submits that excitement is not part of the technical function of a product’. In the third place, the applicant maintains that the case-law relating to ‘alternative shapes’ does not apply to mere arbitrary surface decorations that have no impact on function, as in the present case. Where the surface decoration is an essential characteristic of a three-dimensional mark, there is no risk of monopolisation of a technical solution as embodied in the shape and the scope of protection is limited to the non-functional elements. In the fourth place, the applicant submits that the patents which, at the time, protected the Rubik’s Cube did not claim or even contain colours, but merely referred to distinguishable side faces. It argues that the protection of the surface design, as described in the contested mark, would not therefore lead to any perpetual protection of an element that has previously been protected by patents.
106    EUIPO and the intervener dispute the arguments put forward by the applicant.
107    As a preliminary point, there is no need to call into question the Board of Appeal’s assessments – which, moreover, are not contested by the applicant – relating to the analysis of the functionality of the grid structure and the cube shape.
108    Thus, in paragraphs 55 to 58 of the contested decision, with regard to the grid structure, consisting of black lines which intersect, horizontally and vertically, on each of the faces of the cube, dividing each of them into small cubes of equal size divided into rows of 3x3, the Board of Appeal considered that such a structure was necessary to obtain the intended technical result, relying on the decision cited (paragraphs 40 to 42) concerning EU trade mark No 162784, which was confirmed by the judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure (T‑601/17, not published, EU:T:2019:765, paragraphs 86 and 87). The Board of Appeal took the view that the physical separation between the small cubes was necessary to rotate, vertically and horizontally, the different rows of those small cubes by means of a mechanism located in the centre of the cube (paragraphs 40 to 42 of the decision cited). It added that, in the proceedings before the Cancellation Division, both parties had produced a page from the Wikipedia website relating to the Rubik’s Cube (see Attachment 16 and Exhibit 1), which included the image reproduced below. According to the Board of Appeal, it was clear from that image that the contested mark referred to a product which, apart from the colours, was not different from the one assessed in the decision cited. Consequently, the findings of that decision concerning the technical functionality of the grid structure had also to apply in the present case.
109    Similarly, in paragraph 59 of the contested decision, with respect to the cube shape, the Board of Appeal noted that the Court had confirmed its findings according to which that shape was necessary to obtain the intended technical result. Since the three-dimensional puzzle was made up of small cubes arranged in rows of 3x3 which had to be rotated vertically and horizontally in order to solve the puzzle by giving each face a different colour, the shape of the product as a whole was necessarily that of a cube (judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 89). In the present case, the Board of Appeal considered that, given that the cube shape was inseparable from the grid structure, those findings applied equally to the contested mark.
110    It is now necessary to analyse the functionality of the third essential characteristic, namely the differentiation of the small squares on each face of the cube by means of six basic colours, making it possible to distinguish them and producing a contrasting effect between them (see paragraph 74 above).
111    In paragraphs 71 to 74 of the contested decision, as regards the ‘technical function of the colours’, the Board of Appeal recalled that, in the decision cited concerning the validity of EU trade mark No 162784, it had considered that the different hatching (vertical lines, diagonal lines, dots, etc.) of the squares on each side of the cube suggested different colours and, therefore, that the different colours on the six faces of the cube constituted the third essential characteristic of the sign. In view of the intended technical result, namely to rotate, horizontally and vertically, rows of cubes until each of the faces of the puzzle shows nine squares of the same colour, it had found the colours to be necessary to obtain that result. Thus, the cube would not function as a puzzle if all of its six faces had the same colour (paragraphs 22 and 44 of the decision cited). According to the Board of Appeal, the Court had implicitly confirmed, in its judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure (T‑601/17, not published, EU:T:2019:765), that the colours of the Rubik’s Cube were necessary to obtain a technical result.
112    In paragraphs 75 to 86 of the contested decision, the Board of Appeal found that the applicant’s assertion that the specific combination of the six colours claimed was distinctive and arbitrary – and, moreover, enjoyed copyright protection – could not call into question the abovementioned findings. At the outset, it rejected the argument that the colour combination conferred distinctive character on the Rubik’s Cube successfully marketed by the applicant. It was apparent from Article 51(2) of Regulation No 40/94 that, even if a shape of goods which was necessary to obtain a technical result had become distinctive in consequence of the use which had been made of it, it had to be declared invalid. Next, the Board of Appeal rejected the claim that the colours were not the only solution for obtaining the technical result of distinguishing the different cubes, on the ground that it was based on the incorrect assumption that the colours were to be distinguished from the shape. It observed that the existence of alternative shapes capable of achieving the same technical result did not in itself preclude a trade mark from falling within the scope of Article 7(1)(e)(ii) of that regulation. The fact that the same technical result of the Rubik’s Cube could be obtained by adding patterns, symbols or letters to the surface of the cubes was therefore irrelevant for the purpose of assessing the functional character of the colours at issue. Furthermore, for the same reason, it rejected the argument that the choice of the specific colours had been made arbitrarily. It noted that, as Mr Rubik himself had explained in his written statement of 26 February 2015 (Attachment 22 to the application for a declaration of invalidity), he had originally placed different stickers on the surface of the cubes so that the movement of each cube, when rotated, could be distinguished (paragraph 16 of the statement). According to the Board of Appeal, it followed that any combination of six colours which are sufficiently distinct from each other would be suitable to obtain the desired technical result. It found that the combination of the colours red, green, blue, orange, yellow and white fulfilled that criterion and was therefore necessary to obtain the technical result of the Rubik’s Cube. Lastly, it added that any copyright protection enjoyed by that combination of colours or the design of the Rubik’s Cube could not have any bearing on the assessment of the validity of the contested mark under the abovementioned article.
113    In paragraph 87 of the contested decision, the Board of Appeal concluded that the third essential characteristic, namely the six different colours of the squares on each side of the cube, was necessary to obtain a technical result.
114    In that regard, it must be observed that the fact that each face (and each small square) of the cube can be distinguished by means of six different colours constitutes an essential characteristic of the contested mark which is necessary to obtain the technical result of that mark, as has been established in paragraphs 52 and 53 above. The technical function of that essential characteristic is to make it possible to distinguish, by means of a contrasting effect, each face of the cube, as well as each of the small squares of the grid structure appearing on each of those faces.
115    It must also be observed that the presence in the contested mark of non-essential characteristics consisting of a range of six basic colours, in so far as those colours per se are not functional, does not alter the conclusion that that mark consists exclusively of the shape of goods which is necessary to obtain a technical result, having regard to the case-law on minor arbitrary elements (see paragraph 40 above). Moreover, in the light of the basic character of those colours, the applicant’s claim that ‘excitement is not part of the technical function of a product’ is ineffective in the present case, since the technical function of the different colours at issue is not to ‘excite’ the observer, but to make it possible for him or her to distinguish, by means of a contrasting effect, the faces of the cube and the small squares on them.
116    Those findings cannot be invalidated by the applicant’s arguments.
117    In the first place, as regards the applicant’s reliance on infinite design possibilities in respect of the surface design of the Rubik’s Cube, it must be held that, even if it is true that the intended technical result can be achieved by an infinite number of surface designs, the issue in the present case is not the existence of possible alternatives for non-essential characteristics, but rather the causal link between an essential characteristic and the technical result, that is to say, whether the particular ‘surface design’ in the contested mark which makes it possible to distinguish the faces of the cube and the small squares of the grid structure by means of a contrasting effect constitutes an essential characteristic of that mark which is necessary to obtain the technical result of that mark. Such a causal link has been established in paragraph 114 above. Therefore, the fact that other surface designs (graphic features, symbols, patterns, images, logos, characters, letters, numerals, tactile or electronic means, holograms, bright neon or metallic colours, pastel or dark colours) may be possible is irrelevant in the present case. The reliance on infinite design possibilities is therefore ineffective.
118    It must also be held, as EUIPO contends, that the choice of six basic colours for distinguishing the faces of the cube is one of the most obvious solutions that may be envisaged. The basic character of those colours suggests that they are of minor and secondary importance in relation to the shape (see paragraph 67 above). Moreover, their arrangement on the faces of the cube is unclear (see paragraph 70 above). The most important elements of the contested mark are the cube shape, the grid structure and the fact that each face of the cube is distinguishable from the others by means of a contrasting effect. The possibility that other finishes of the surface that are more sophisticated and less basic might ‘upgrade’ those designs to the level of an essential characteristic remains irrelevant to the outcome of the present dispute (see paragraph 70 above).
119    In the second place, as regards the applicant’s argument relating to the ‘creative process’ behind the Rubik’s Cube, it is sufficient to note that the Board of Appeal stated, in paragraph 78 of the contested decision, that ‘any … combination of six colours’ would be suitable to obtain the desired technical result. It did not refer to other possible surface designs, such as logos that would be eye-catching or ‘exciting’. Even assuming that the Board of Appeal erred in considering that ‘any … combination of six colours’ would be suitable to obtain the technical result, because certain other specific colour combinations could, by themselves, be regarded as an essential characteristic of the contested mark, that would not suffice to call into question the legality of that decision, since the present combination of six specific colours (in an unclear arrangement, moreover), although non-functional in itself, is not an essential characteristic of that mark. That argument is therefore ineffective.
120    In the third place, the applicant’s argument concerning the inapplicability of the case-law relating to alternative shapes is based on the premiss that, in the present case, the specific combination of six colours is an essential characteristic of the contested mark. However, the present specific combination of six colours (in an unclear arrangement, moreover), although non-functional in itself, is not an essential characteristic of that mark. Therefore, the question whether or not the Board of Appeal erred in considering that that case-law was applicable in the present case is irrelevant to the outcome of the present dispute. That argument is therefore ineffective.
121    In the fourth place, as regards the applicant’s argument that the patents which previously protected the Rubik’s Cube neither claimed nor even contained colours, but merely referred to distinguishable side faces, it must be stated that such a circumstance does not allow conclusions to be drawn as to the scope of protection of the contested mark. It is in no way apparent from the representation of that mark – which is a three-dimensional mark and not a colour, position or pattern mark – or from its description that protection is sought only for the combination of the six specific colours and their arrangement, which, moreover, is unclear. Therefore, that argument is ineffective.
122    In that regard, it must be stated that EU trade mark law does not contain case-law equivalent to that applicable in the separate context of EU design law, in which appearance is the decisive factor with respect to the subject matter of protection (see judgment of 8 March 2018, DOCERAM, C‑395/16, EU:C:2018:172, paragraph 25 and the case-law cited). According to that case-law, where a particular arrangement of features is chosen for purposes other than the need to fulfil a technical function and, in particular, for ornamental purposes, the design is valid, but protects only that particular arrangement and not the solely functional features of appearance of the product that are concerned by that arrangement (see, to that effect, judgment of 18 November 2020, Tinnus Enterprises v EUIPO – Mystic Products and Koopman International (Fluid distribution equipment), T‑574/19, EU:T:2020:543, paragraphs 25 and 26). In EU trade mark law, by contrast, the fact that the combination of exclusively functional elements brings an overall aesthetic value or contributes to creating an ornamental image of the mark in respect of which registration is sought does not preclude the application of the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 (see paragraph 42 above) or the application of the corresponding ground for invalidity.
123    The Board of Appeal did not therefore make an error of assessment in finding, in essence, that the essential characteristic relating to the fact that each face (and each small square) of the cube can be distinguished by means of six different colours producing a contrasting effect was functional, that is to say, necessary to obtain the technical result of the contested mark.
124    The second part of the single plea in law must therefore be rejected.
The third part of the single plea in law, alleging an error of assessment relating to ‘jigsaw puzzles’
125    By the third part of the single plea, which relates more specifically to ‘jigsaw puzzles’ in Class 28, the applicant complains that the Board of Appeal wrongly applied Article 7(1)(e)(ii) of Regulation No 40/94 since, first of all, the shape of the Rubik’s Cube is not a ‘picture’ and, next, the technical result on which the Board of Appeal based its assessment (see paragraph 52 above), namely, in essence, that of rotating elements which have already been assembled, is not the technical result of a jigsaw puzzle, the purpose of which is to complete a picture by assembling individual interlocking elements.
126    EUIPO and the intervener dispute the arguments put forward by the applicant.
127    In paragraphs 88 to 90 of the contested decision, the Board of Appeal noted that the Cancellation Division had held that ‘three-dimensional puzzles’, in respect of which the three essential characteristics of the contested mark had been found to be necessary to obtain a technical result, were identical to, or encompassed by, the broader categories of ‘toys, games, playthings, three-dimensional puzzles’ in Class 28. With regard to jigsaw puzzles, the Cancellation Division had considered that it could not be excluded that the three-dimensional shape consisting of cubes of different colours could serve to obtain the technical result of pressing those cubes in order to fit them together in a certain position with the same colour sequence. The Board of Appeal observed that the appeal before it challenged only that reasoning with regard to jigsaw puzzles, and it agreed that the explanation provided by the Cancellation Division in this respect was not intelligible. However, it considered that the finding that the shape protected by the contested mark was necessary to obtain the technical result of jigsaw puzzles had to be confirmed. According to its literal meaning, a jigsaw puzzle was a tiling puzzle that required the assembly of often irregularly shaped interlocking and mosaicked pieces, each of which typically had a portion of a picture, such that, when assembled, the puzzle pieces produced a complete picture. The Board of Appeal considered that, even if a Rubik’s Cube might not have been the first example of a jigsaw puzzle that would come to mind, there was nothing in the representation of the sign that would exclude the possibility of dismantling the cube and reassembling it in order to make the perfect combination, the grid structure being necessary to separate the individual cubes and the colours being necessary to indicate the order in which the cubes had to be reassembled.
128    The Board of Appeal concluded, in essence, that the contested mark had been registered contrary to the provisions of Article 7(1)(e)(ii) of Regulation No 40/94 in respect of all the goods covered by the registration, including jigsaw puzzles.
129    In that regard, it is common ground that the present part of the single plea in law does not concern ‘three-dimensional puzzles’ (in the sense of ‘mechanical puzzles’), but only the indication ‘jigsaw puzzles’, that is to say, goods which are typically two-dimensional, even if they also exist in three dimensions.
130    It must be observed that, although the application of Article 7(1)(e)(ii) of Regulation No 40/94, which concerns shapes, and therefore three-dimensional goods, to such an indication of typically two-dimensional goods may appear perplexing, the reason lies initially in the choice of that indication made by the applicant (or its predecessor in law).
131    It should be borne in mind that, under Rule 2(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as applicable in the present case, the list of goods and services in respect of which a mark is applied for is to be worded in such a way as to indicate clearly the nature of the goods and services.
132    It follows that it is for the person requesting registration of a sign as an EU trade mark to give, in the application, a list of the goods or services in respect of which the registration is requested and to provide, for each of those goods or services, a description clearly indicating its nature (see judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO – Fink (NANA FINK), T‑39/16, EU:T:2017:263, paragraph 44 and the case-law cited).
133    That requirement of clarity has, moreover, been reinforced by the case-law of the Court of Justice, according to which the goods and services in respect of which an EU trade mark is applied for must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark (judgment of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraph 64).
134    In the present case, it must be observed that the indication ‘jigsaw puzzles’ in English (the language in which the contested mark was filed), in respect of goods in Class 28, is capable of being interpreted in two different ways. On the one hand, that indication could be interpreted restrictively, as the applicant submits, as meaning a two-dimensional ‘picture’. However, the filing of a three-dimensional mark in respect of such two-dimensional goods does not appear plausible. On the other hand, that indication could be interpreted more broadly as referring both to ‘jigsaw puzzles’ in picture form (two dimensions) and to ‘jigsaw puzzles’ in volume (three dimensions), which would be more plausible for a three-dimensional mark, the type of mark chosen by the applicant (or its predecessor in law).
135    It must be stated that, in allowing for the two differing interpretations referred to above in respect of goods in Class 28 covered by the contested three-dimensional mark, the indication ‘jigsaw puzzles’ is ambiguous and, consequently, cannot meet the requirement of clarity arising from Rule 2(2) of Regulation No 2868/95 and from the case-law.
136    It must be recalled that, according to the case-law, the proprietor of a trade mark should not gain from the infringement of its obligation to draw up the list of goods with clarity and precision (see judgment of 6 April 2017, NANA FINK, T‑39/16, EU:T:2017:263, paragraph 48 and the case-law cited).
137    Therefore, the indication concerned must not be interpreted in such a way that it includes only, for the benefit of the applicant, two-dimensional ‘jigsaw puzzles’, which would allow that indication to avoid the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 and the corresponding ground for invalidity. That indication must be interpreted in such a way that it also includes three-dimensional ‘jigsaw puzzles’.
138    As regards three-dimensional ‘jigsaw puzzles’, it must be held that they are necessary to obtain the technical result of the contested mark (see paragraphs 52 and 53 above). As the Board of Appeal correctly considered in paragraph 90 of the contested decision, there is nothing in the representation of that mark, provided by the applicant’s predecessor in law, that excludes the possibility of dismantling the cube and reassembling it in order to make the perfect combination, the grid structure being necessary to separate the individual cubes and the colours being necessary to indicate the order in which the cubes must be reassembled.
139    The Board of Appeal did not therefore make an error of assessment in finding that the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 also applied to ‘jigsaw puzzles’ and, accordingly, in concluding that the contested mark was caught by the corresponding ground for invalidity in respect of all the goods covered by the registration.
140    The third part of the single plea in law must therefore be rejected.
141    In the light of all of the foregoing considerations, the action must be dismissed in its entirety.
Costs
142    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
143    Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by EUIPO and the intervener. Furthermore, as regards the costs incurred by the intervener before the Board of Appeal, it suffices to observe that, given that the present judgment dismisses the action brought against the contested decision, it is point 2 of the operative part of that decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Spin Master Toys UK Ltd to pay the costs.
Costeira
Kancheva
Tichy-Fisslberger
Delivered in open court in Luxembourg on 9 July 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
Table of contents
Background to the dispute
Forms of order sought
Law
Preliminary observations
The type of the contested mark
The technical result of the contested mark
The first part of the single plea in law, alleging an error of assessment in the identification of the essential characteristics of the contested mark
The preliminary claim, relating to the essential characteristics of the contested mark
The main complaint, alleging that the differentiation by means of six colours cannot be regarded as forming an integral part of the shape of the contested mark
The second part of the single plea in law, alleging an error of assessment in the analysis of the functionality of the contested mark
The third part of the single plea in law, alleging an error of assessment relating to ‘jigsaw puzzles’
Costs
*      Language of the case: English.