“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 and (ii) each such surface having a grid structure formed by black borders dividing the surface into nine equal segments”.

If you did not recognize that quote as describing the colour scheme used on a Rubik’s Cube, not to worry – neither did the Board of Appeal for the Office of Harmonization for the Internal Market (OHIM), which is the central body for registering European trademarks.

In 2007, Seven Towns Ltd., the owner of the rights to the Rubik’s Cube, applied for a Europe-wide “colour” trade mark for the Rubik’s Cube. Along with the description above, Seven Towns provided a list of the specific colours used on the Rubik’s Cube, as defined by the colours’ Pantone Colour Chart numbers. According to a European Council Regulation, in order to be eligible for a Community (Europe-wide) Trade Mark (“CTM”), a mark must “consist of any signs capable of being represented graphically…provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.” According to European case law, the graphical representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

After OHIM examined Seven Towns’ “colour” CTM application, OHIM informed Seven Towns that it was changing the description of the CTM from a “colour” mark to a figurative trade mark. OHIM reasoned that a “colour” mark cannot be spatially limited, and the Rubik’s Cube’s colours are separated into six square surfaces of nine equal squares each, all separated by black lines. However, Seven Towns objected to the change, and petitioned OHIM to reverse its decision. Two years later, OHIM finally responded to Seven Towns’ multiple attempts at communication, and stated that it was going forward with the figurative trade mark description, which it eventually rejected entirely. Seven Towns appealed to the OHIM Board of Appeal, but its application for a “colour” CTM was again rejected. Seven Towns then appealed to the European Union Court of Justice.

Seven Towns made three main arguments before the EU Court of Justice: 1) OHIM took too long to respond to Seven Towns, and the Board of Appeal therefore had no right to re-examine the substantive issues of the case. 2) The OHIM Board of Appeal rejected the application outright, rather than remitting the issue to OHIM, which took away Seven Towns’ right to be heard. 3) The OHIM Board of Appeal invented a test with no legal basis, and then misapplied that test.

The EU Court of Justice rejected the first two procedural arguments. With regard to the third argument, the OHIM Board of Appeal applied a test of “whether a reasonably observant person with normal levels of perception and intelligence would, upon consulting the Community trade mark register, be able to understand precisely what the mark consists of, without expending a huge amount of intellectual energy and imagination.” Seven Towns argued that “normal levels of intelligence” and “huge amounts of intellectual energy” are not legal terms, and the outcome of the test is therefore unpredictable. Seven Towns further argued that the correct test to apply was the graphical representation test, as described above.

The Court, applying the logic of the OHIM Board of Appeal, held that the two tests can be applied simultaneously. The main reason for the graphical representation test is so that other traders can consult the trade mark register, and determine precisely what marks are protected. Therefore, the Court determined that the people with “normal levels of intelligence” referred to in the OHIM Board of Appeal’s test should be interpreted as average traders.

The Court agreed with the OHIM Board of Appeal that Seven Towns’ CTM application did not meet the graphical representation test, as perceived by average traders. The Court held that the reference to seven colours (red, green, blue, orange, yellow, white, and black) and six surfaces would leave most people confused. As well, the description provided at the beginning of this article is not an unambiguous description of a Rubik’s Cube; since the six surfaces are not explicitly described as square, the object described could just as easily be a rectangular prism. Finally, even if the description was unambiguous, it is still a three-dimensional form covered in different colours, which falls squarely into the definition of a figurative mark, rather than a “colour” mark.

While the EU Court of Justice dismissed Seven Towns’ appeal, the massive appeal for its colourful toy has not faltered; in fact, the Rubik’s Cube has been considered by some to be the best-selling toy in the world. Competitions are held globally many times a year, in order to determine the fastest time to solve a Rubik’s Cube, with the world record currently at 5.66 seconds; if OHIM had responded to Seven Towns in a similar timely fashion in 2007, perhaps this whole case could have been avoided.

Evan Reinblatt is a JD candidate at Western University, Faculty of Law.