Supreme Court hears Lego appeal

The Supreme Court of Canada has this week heard an appeal that will undoubtedly have significant implications for the rights of unregistered trademark owners in Canada and, particularly, rights in unregistered functional trademarks.

The appeal, in Lego Canada Inc v Ritvik Holdings Inc (now Mega Bloks Inc), comes from a split decision of the Federal Court of Appeal in which the court dismissed Lego's passing off action brought pursuant to Section 7(b) of the Trademarks Act. It held that the alleged distinguishing guise trademark - the cylindrical knobs appearing on the tops of Lego's self-locking bricks - was not a valid mark. In particular, the majority of the Federal Court of Appeal found that a trademark that is primarily functional in nature cannot support an action for passing off.

The Supreme Court of Canada appeal raises issues about the scope of trademark protection, particularly in relation to functional marks, and about the constitutionality of Section 7(b) of the Trademarks Act.

A decision on the appeal is expected within the next few months.

For background information on the case, see Supreme Court to hear Lego appeal and Lego block's look cannot function as a trademark.

R Scott MacKendrick and Mark Davis, Ogilvy Renault LLP, Toronto