Supreme Court to hear Lego appeal

The Supreme Court of Canada has granted an application for leave to hear an appeal from the Federal Court of Appeal's decision in Lego Canada Inc v Ritvik Holdings Inc.

Lego had sued Ritvik (now operating as Mega Bloks) in the Federal Court for passing off with respect to the cylindrical stud pattern found on the upper surface of a LEGO brick. At trial, the Federal Court found that even though there was a likelihood of confusion, the stud pattern was not a valid trademark as it was purely functional in nature. Consequently, Lego's action was dismissed.

In a split decision, the Federal Court of Appeal affirmed that a trademark, whether or not registered, cannot be valid within the meaning of the Trademarks Act if it is primarily functional, namely, if its functional character relates to the wares in association with which it is used. The Federal Court of Appeal ruled that the LEGO shape mark, like any primarily functional trademark, does not give its owner the exclusive right to use this mark in association with products that are related to its functionality - here, sets of building blocks (see Lego block's look cannot function as a trademark).

The Supreme Court of Canada essentially limits itself to hearing matters of national importance. In this case, the Supreme Court will consider whether a trademark that is primarily functional is nevertheless entitled to protection when secondary meaning and confusion are established. The appeal is likely to be heard within a year.

Mark K Evans, Smart & Biggar/Fetherstonhaugh & Co, Toronto