Case information

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The Appellants alleged that the Respondent directed public attention to its wares in such a way as to cause or be likely to cause confusion in Canada between its wares (MICRO MEGA BLOKS) and the Appellants’ wares (LEGO blocks). The allegation relates to the adoption by the Respondent and extensive use of the “LEGO indicia” in the Respondent’s promotional and marketing material for MICRO MEGA BLOKS. The Appellants claim that the LEGO indicia constitute an unregistered trade-mark. The LEGO indicia are the upper surface of the LEGO toy building block, having eight studs distributed in a ratio of two units high, five units wide, and eight units centre-to-centre on the surface of the block. All or some studs on one LEGO piece may be connected to the underside of a second LEGO block. The “clutch power” of the pieces derives from the friction between the knobs on one piece and the tubes and walls on the underside of the second. The LEGO indicia has been unmodified since 1949. Since 1958, the word “LEGO” has been inscribed on the top of each stud. The last patent on LEGO expired in 1988.

The trial judge found that the LEGO indicia were functional in all respects save the name “LEGO” printed on the studs. Both the majority and the dissent at the Federal Court of Appeal agreed. The Appellants do not contest that finding.

The dispute turned on whether a primarily functional mark can be a valid trade-mark. The trial judge and the majority of the Federal Court of Appeal found that the doctrine of functionality applied, preventing the LEGO indicia from becoming a trade-mark. Having so found, they were not required to consider the passing off action, although the trial judge did go on to find that the Appellants had not proven passing off as they had not proven deliberate misrepresentation. The Federal Court of Appeal dismissed the appeal. Pelletier J.A. dissenting in the Federal Court of Appeal found that the doctrine of functionality does not apply to unregistered trade-marks since unregistered trade-marks do not grant a monopoly to their owners and that the misrepresentation did not have to be deliberate. He would have allowed the appeal and granted the passing-off action.