Case T‑1171/23

Spin Master Toys UK Ltd

v

European Union Intellectual Property Office

Judgment of the General Court (Sixth Chamber) of 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)

1. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result – Identification of the essential characteristics of a sign

   (Council Regulation No 40/94, Arts 7(1)(e)(ii) and 51(1)(a))

   (see paragraphs 24-30)

2. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result – Assessment of the essential characteristics in the light of the technical function of the goods

   (Council Regulation No 40/94, Arts 7(1)(e)(ii) and 51(1)(a))

   (see paragraphs 31-34, 38, 40-46, 122)

3. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result – Cube with faces having a grid structure and differentiated by their colours

   (Council Regulation No 40/94, Arts 7(1)(e)(ii) and 51(1)(a))

   (see paragraphs 48-53, 61-76, 85-89, 114-123, 134-139)

4. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result – Concept of shape – Three-dimensional trade mark in colour – Included

   (Council Regulation No 40/94, Arts 7(1)(e)(ii) and 51(1)(a))

   (see paragraphs 84, 90-94, 101)

5. EU trade mark – Definition and acquisition of the EU trade mark – Identification of the goods or services concerned by the trade mark – Obligation on the applicant to specify the goods or services covered by his or her application – Scope

   (Commission Regulation No 2868/95, Art. 1, Rule 2(2))

   (see paragraphs 132, 133)

Résumé

By its judgment, the General Court dismisses the action brought by Spin Master Toys UK Ltd, the applicant, seeking the annulment of the decision of the European Union Intellectual Property Office (EUIPO) of 20 October 2023. This case allows the Court to clarify the concepts of ‘shape’ and ‘essential characteristic’ in the context of a three-dimensional trade mark registered in colour.

The applicant was the proprietor of a three-dimensional trade mark with a 3×3 version of the puzzle known as a Rubik’s Cube. An application for a declaration of invalidity of that mark was filed with EUIPO by Verdes Innovations SA.

EUIPO upheld the application for a declaration of invalidity of the contested mark. That decision was confirmed by the Board of Appeal of EUIPO, which considered that the colours of the squares on each side of the cube were an essential characteristic of the mark and formed an integral part of its shape. It thus found that the combination of the six different colours was necessary to obtain a technical result, within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94. ( 1 )

Subsequently, the applicant brought an action before the Court, claiming that the contested mark has essential characteristics which do not consist exclusively of the shape and which, in any event, are not necessary to obtain a technical result.

Findings of the Court

As a preliminary point, the Court recalls that 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.

In the present case, it is necessary to take account of the fact that the contested mark was filed as a three-dimensional mark or shape mark, and not as a pattern, position or colour mark. It must also be observed that the technical result of the contested mark is that of a game which consists in completing a cube-shaped three-dimensional colour puzzle by generating six differently coloured faces.

In the first place, the Court states that the expression ‘essential characteristics’ must be understood as referring to the most important elements of the sign, as opposed to minor arbitrary elements. In the present case, it holds, as did the Board of Appeal, 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.

By contrast, it finds that the six specific colours placed on the faces of the cube and their alleged ‘specific arrangement’ do not constitute an essential characteristic of the contested mark. Those elements are of minor and secondary importance in relation to the cube shape, the grid structure and the differentiation of the faces of the cube. This follows both from the examination of the individual elements of that mark and from the examination of the overall impression produced by it, that examination having to 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. First, the six basic colours merely perform the function of distinguishing the different faces of the cube by means of a contrasting effect. Second, the alleged ‘specific arrangement’ of the colours on the faces of the cube does not appear clearly in the graphic representation of the contested mark. Third, neither the type of the contested mark (three-dimensional) nor its description 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.

In the second place, the Court examines whether the third essential characteristic, namely the differentiation by means of six colours, may be regarded as forming an integral part of the shape of the contested mark. It considers that, in the light of the public interest underlying Article 7(1)(e)(ii) of Regulation No 40/94, 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. Given the type of the contested mark as well as its graphic representation and its description, the differentiation of the small squares on each face of the cube by means of six basic colours is inherent in and inseparable from the shape represented and forms an integral part of that shape. In that regard, the addition of six basic colours, in an unclear arrangement, 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 of the cube by means of basic colours constitutes an essential characteristic of that mark.

As regards the application of Regulation No 40/94 to three-dimensional colour marks, the Court notes that the insertion of the wording ‘another characteristic’ into Article 7(1)(e)(ii) of Regulation No 207/2009 ( 2 ) was not intended to establish that such marks 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 and to the subsequent introduction of new types of ‘non-traditional’ trade marks into the EU trade mark system. Three-dimensional trade 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.

In the third place, the Court considers 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 is functional, that is to say, necessary to obtain the technical result of the contested mark. The presence 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 the contested mark consists exclusively of the shape of goods which is necessary to obtain a technical result.

In the fourth and last place, the Court states 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, that the contested mark was caught by the corresponding ground for invalidity in respect of all the goods covered by the registration. Although the indication ‘jigsaw puzzles’, in respect of goods in Class 28, is ambiguous and unclear, it cannot 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. Therefore, that indication must be interpreted in such a way that it also includes three-dimensional ‘jigsaw puzzles’. They are necessary to obtain the technical result of the contested mark, since there is nothing in the representation of that mark 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.

( 1 ) 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 51(1)(a) of that regulation.

( 2 ) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) replaced Regulation No 40/94.