EU General Court Backs Augusta National in Trade Mark Dispute - EUIPO Invalidates Rubik's Cube 3D Trade Mark

EU General Court Backs Augusta National Golf Club in Trade Mark Case

In a recent ruling issued on 15 November, the General Court of the European Union (CJUE) rejected the trade mark application of the Madrid company Portal Golf Gestión. The refusal was based on the possibility of confusion with the well-known US company Augusta National, which specialises in the management of products and services related to golf and the organisation of tournaments.

In December 2018, Portal Golf Gestión sought to register the trade mark "imaster.golf" with the European Union Intellectual Property Office (EUIPO). The trade mark consisted of the combination of a figurative elements (a multi-colour circle) over the word element “imaster.golf, and covered a wide range of goods and services, from computer software to golf course management, software updates and intellectual property licenses, covered by classes 9, 38, 42 and 45 of the Nice Classification.

The opposition by Augusta National, Inc. was based on its registered EU trade mark 'MASTERS', claiming that there was a likelihood of confusion between the two signs, and that its own earlier mark had a reputation of which Portal Golf Gestión was seeking to take advantage, as per 8(5) of the European Union Trade Mark Regulation (EUTMR). The EUIPO Opposition Division upheld the opposition on the ground that the mark 'imaster.golf' would take unfair advantage of the reputation of 'MASTERS' for 'golf tournament type entertainment services' in Class 41. Despite the appeal filed by Portal Golf Gestión, the EUIPO Board of Appeal upheld the decision of the Opposition Division, considering that the mark applied for would create a likelihood of association and take unfair advantage of the reputation of "MASTERS".

Recently, the GC confirmed the decision, highlighting the similarity of the goods and services, the likelihood of confusion and the reputation of the earlier mark, particularly in the field of golf tournaments.

Portal Golf Gestión sought to argue that the “MASTERS” earlier trade mark should never have been registered in the first place, as it lacks the necessary distinctiveness to be registered as a trade mark. The Court rejected Portal Golf Gestión's objections, stating that absolute grounds for refusal, such as lack of distinctiveness under Article 7(1)(b) EUTMR, are not applicable in opposition proceedings, and that in order to have the trade mark removed, Portal Golf Gestión should have filed an invalidity claim.

On the comparison of the signs. The GC held that the Board of Appeal did not make any errors of assessment in concluding that there was visual and phonetic similarity between the conflicting signs. The 'master' element of the mark reproduced most of the letters of the earlier mark. Although there were additional elements, such as the letters 'i' and 'golf', the distinctive presence of the 'master' created a visual similarity which prevailed. Despite the difference in the number of syllables, the pronunciation of 'mas' and 'ters' remains similar, particularly in languages in which the final 's' is not pronounced. Although the mark applied for, 'imaster.golf', had four syllables, the phonetic identity was centred on the component 'master' even though their distinctiveness was below average, and conceptual similarity, which was considered to be weak.

The Court held that the Board of Appeal was not wrong in stating that while the marks were not highly similar conceptually, (due to the inclusion of the visual element and the letter “I” and word “golf”), a conceptual link was maintained by the common element 'master' and there was therefore a real likelihood of association by the consumers between the two marks as they both referred to golf.

In conclusion, the GC upheld the decision of the Board of Appeal and refused the registration of the "imaster.golf" trade mark in favour of Augusta National's earlier mark "MASTERS" which it accepted had a reputation (thereby lowering the thresholds related to similarity), thus upholding the protection of the reputation of the earlier mark in the specific field of golf tournaments.

EUIPO Invalidates Rubik's Cube 3D Trade Mark

In a recent decision, the EUIPO First Board of Appeal annulled the three-dimensional trade mark registration of the Rubik's Cube. The case, R 850/2022-1 followed an action by Verdes Innovations S.A seeking the annulment of the Rubik’s Cube 3D trade mark owned by Spin Master Toys UK Ltd on the basis of two arguments: that the graphic representation of the cube did not comply with the legal requirements and that its shape was necessary to achieve a technical result and should therefore not be protected as a trade mark.

The Rubik's Cube, a popular puzzle game invented by Ernő Rubik, has gained worldwide recognition since its introduction in the 1980s. The cube's distinctive shape, black grid structure and six different colours is one of the most famous toy in the world. The cancellation applicant claimed that the shape of the cube fell under Article 7(1)(e)(ii) of Regulation No 207/2009, which excludes from trade mark registration signs consisting exclusively of the shape of goods which is necessary to obtain a technical result. They argued that the essential characteristics of the cube, including its shape, grid structure and colours, were all necessary for the functioning of the puzzle game.

On the other hand, the Spin Masters argued that the shape of the cube was not necessary to achieve the technical result of the puzzle, and that the colours were merely decorative and that alternative shapes could achieve the same result. They also pointed out that the Rubik's Cube was protected by copyright and that the colours of the cube were the result of the designer's choice, showing that it was not a necessary feature of the 3D object, but rather an arbitrary decision.

The EUIPO First Board of Appeal upheld the application for cancellation and declared the Rubik's Cube mark invalid. The three fundamental elements of the toy, the shape of the cube, the black grid and the different colours, were considered essential to Rubik's Cube and necessary to achieve the technical result of completing the puzzle by creating six different coloured surfaces.

In relation to the decorative nature of the colours, the Board of Appeal confirmed that the different colours of the cube were essential to distinguish the different sides and to match all the squares of the same colour on each side of the cube. Therefore it rejected the argument that alternative colours could have been chosen. Lastly, it rejected Spin Masters’ argument that the specific combination of colours of the Rubik's Cube had acquired distinctiveness, and therefore still fulfilled the necessary conditions to be registered as trade mark since it did function as a sign of origin of the products. This was rejected on the basis of Article 52(2) of Regulation Nº 207/2009 which states that the shape of goods which is necessary to obtain a technical result must be declared invalid even if it has acquired distinctive character through use.

In conclusion, the recent invalidation of the Rubik's Cube trademark by the First Board of Appeal of the EUIPO is yet another remined that trade marks cannot be used to limit the technical features of competing products. This decision also clarifies the difference between trade mark protection and other rights such as copyright. While copyright can cover some aspects of the Rubik's Cube, trade marks cannot extend to shapes that are essential to fulfil technical functions.