Kirkbi AG v. Ritvik Holdings Inc.

Kirkbi AG v. Ritvik Holdings Inc.

Majority (Sexton J.A.) held that the LEGO Indicia is primarily functional (an integral functional element of the bricks disclosed in expired patents) and the doctrine of functionality applies to both registered and unregistered marks under the Act; a mark that is primarily functional cannot be a trade-mark within the meaning of the Act and cannot support a s.7(b) passing-off action; appeal dismissed with costs.

Citation
2003 FCA 297
Parties
Appellant/plaintiff: KIRKBI AG; Appellant/plaintiff: LEGO Canada Inc.; Respondent/defendant: Ritvik Holdings Inc./Gestions Ritvik Inc. (now operating as Mega Bloks Inc.)
Court
Federal Court of Appeal
Jurisdiction
Canada
Judgment Date
14 July 2003
Procedural Posture
Trade Mark Infringement (passing Off) / Appeal to Federal Court of Appeal From Federal Court (trial)
Outcome
Appeal dismissed
Legal Topics
Functionality Doctrine, Distinguishing Guise, Registrability and Expungement (s.13), Passing Off Under S.7(b)
Source Language
English
Intellectual Property Trade Marks Law Unfair Competition Patent Law Functionality Doctrine Distinguishing Guise Registrability and Expungement (s.13) Passing Off Under S.7(b)

Case Brief

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Parties

KIRKBI AG

Appellant/plaintiff

LEGO Canada Inc.

Appellant/plaintiff

Ritvik Holdings Inc./Gestions Ritvik Inc. (now operating as Mega Bloks Inc.)

Respondent/defendant

Procedural Posture

Trade Mark Infringement (passing Off) / Appeal to Federal Court of Appeal From Federal Court (trial)

Legal Issues

  1. 1 Whether the trial judge erred in finding the LEGO Indicia primarily functional
  2. 2 Whether a mark that is primarily functional can constitute a trade-mark under the Trade-marks Act and sustain a s.7(b) passing-off action

Ratio Decidendi

Majority (Sexton J.A.) held that the LEGO Indicia is primarily functional (an integral functional element of the bricks disclosed in expired patents) and the doctrine of functionality applies to both registered and unregistered marks under the Act; a mark that is primarily functional cannot be a trade-mark within the meaning of the Act and cannot support a s.7(b) passing-off action; appeal dismissed with costs.

Court Disposition

Appeal dismissed

Orders

  • Appeal dismissed with costs