Rubik's Cube shape trade mark invalid

Rubik's eponymous Cube, surely one of the most well-known and distinctive shapes on the planet, has been deprived of protection - if you believe what you read in the press. Even The Guardian, which in an age of increasingly unreliable journalism has become the source of my regular fix (not being paywalled like the FT, which would otherwise be my preference), has succumbed. In fact the Court of Justice's decision seems like a perfectly good application of the rules that are designed to ensure that trade mark protection does not protect function. The Court of Justice ruled: “In examining whether registration ought to be refused on the ground that shape involved a technical solution, EUIPO and the General Court should also have taken into account non-visible functional elements represented by that shape, such as its rotating capability.”

You might argue that it leans a little too far in the direction of liberality (that is, excluding shapes from protection), as I think I would - should the internal workings of the article really be taken into account? - but the basic rule is a good one. It is also, I think, relevant to ask whether the shape performs a trade mark function - is it an indication of source or origin, or merely the shape of the object? The argument (mentioned in The Guardian's article) that the rights owners should rely on patent protection is also sound, but as the Cube was invented over 40 years ago this suggestion does little but draw attention to the fact that patent protection might be too short (and an arbitrary 20 year term is sure to be too short for some inventions, too long for others).

Actually, were the patent system to give Ernő Rubik's invention that much protection, it would be failing in its main purpose - to encourage innovation. It works, paradoxically, by giving innovators limited exclusive rights, after which anyone who wants to do so can work the invention. During the lifetime of the patent the inventor can make a lot of money (or, of course, none at all) but once it has gone, it has gone. Others must be free to make their own cubes - the interests of society would not be served if cheap alternatives were not available.

Where the commentators err is in treating the loss of the shape trade mark as a disaster. In fact it is a bit of evergreening too far. The trade mark system should not be used to protect technical shapes: they should be freely available to other manufacturers once patent and design protection has expired. We should all be able to buy alternative cubes. What we cannot do - because a large portfolio of trade marks still ensures this - is buy Rubik's Cubes from any other source. And that is how it should be.

London Taxi Corp sues over Metrocab

Bloomberg reports (15 June) that the manufacturers of classic black London taxis, now owned by Chinese manufacturer Geely, is taking exception to a new environmentally-friendly rival, Metrocab. One of the partners in the Metrocab company, which like The London Taxi Corporation is based, as any respectable British vehicle manufacturer should be, in Coventry (or Abingdon, of course, or Malvern), is Frazer-Nash research: so are the new cabs to be chain-driven?

So far there appears only to have been a preliminary hearing, The London Taxi Corporation Ltd. v. Frazer Nash Research Ltd. & Anr, High Court of Justice, Chancery Division, HC14B01502. (It turns out, now that the judgment is available - see below - that it was an application relating to survey evidence, which the judge Spearman J was not inclined to allow.) Bloomberg reports that London Taxi alleges that Metrocab "breaches its trademarks", which they would not have written had they paid attention. The verb is "infringe" not "breach" and trade mark is two words ... But London Taxi Corporation has several registered trade marks covering the shape and appearance of their product (for example this one), so potentially there is infringement. Are the trade marks vulnerable to attack on the grounds that the design is generic, I wonder? And is the Metrocab similar enough for there to be a likelihood of confusion? It certainly looks significantly different to me, but I might not be an average user of London cabs.

Update: The London Taxi Corporation Ltd (t/a the London Taxi Company) v Frazer-Nash Research Ltd & Anor [2015] EWHC 1840 (Ch) (03 July 2015)

B&O loudspeaker shape cannot be registered as trade mark

The directive and the regulation both say you cannot register as a trade mark a shape that gives substantial value to the goods to which it is applied. In Case T-508/08 Bang & Olufsen v OHIM the General Court applied this rule to uphold the Office's refusal to register the shape of its speakers.

And quite right too. That provision has always caused me a little worry, as the whole point of applying a trade mark - any sort of trade mark - to goods is to enhance their value. A plain unmarked bottle of brown fizzy liquid is worth little: make the bottle curvaceous and apply a Coca-Cola (or Pepsi) label and it's a different story. But just because the law might be difficult to apply in extreme cases doesn't mean it is wrong.

The B&O case has a long history. Their application, filed in 2003, was refused as being devoid of any [sic] distinctive character. (This "devoid of any" formation grieves me - surely the "any" is redundant, as "devoid" means having none at all, without the need to reinforce it.) The Court then upheld their appeal, sending the case back to Alicante, where it was refused again but this time on the grounds that the shape gave substantial value to the goods. You have to acknowledge the applicants' persistence, because they set off on another expedition to Luxembourg to get that straightened out too.

Except that the court did not oblige:

The Court finds that in the present case the shape for which registration was sought has a very specific design. In the Court’s view, that design is an essential element of Bang & Olufsen’s branding and increases the value of the product concerned. Furthermore, it is apparent from extracts from distributors’ websites and online auction or second-hand websites that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point. Accordingly, the Court holds that OHIM did not make any error in finding that, independently of the other characteristics of the product at issue, the shape for which registration was sought gives substantial value to that product.

The court also noted that it was perfectly OK for the Office to work through the absolute grounds for refusal one after the other, as they are independent. The result: no trade mark protection for the shape. I know it looks pretty distinctive, and B&O thrive on the appearance of their products, but the interface between design protection and trade mark protection is one that has to be guarded carefully. These same loudspeakers - the designs for them - can be protected for 25 years as designs, and if that is considered to be the right period of protection then whose interest would be served by permitting them to be protected by the trade mark system too, potentially for ever?