Digests

Kirki AG v. Ritvik Holdings Inc.

T-2799-96

2002 FCT 585, Gibson J.

24/5/02

89 pp.

Passing-off action wherein plaintiffs sought to prove defendant had directed attention to its wares in way as to cause or be likely to cause confusion in Canada--Action relating particularly to adoption, use by Ritvik, in promotion of "Micro" line of building blocks, of "Lego Indicia trade mark" 2 x 4 Lego block (studs arrayed in 2 mutually "orthogonal" rows, columns, each consisting of 4 studs)-- Action dismissed --Evidence establishing Kirki, Lego Canada each having sufficient "ownership" interest, in Canada, in Lego Indicia, to qualify as plaintiffs in this action-- Federal Court Act, s. 20(2) vesting Court with concurrent jurisdiction if remedy sought, as herein, in respect of alleged trade-mark under authority of constitutionally valid provision of Trade-marks Act (s. 7(b)--"Functionality" of Lego Indicia--Extensive evidence that Lego Indicia functional element of Lego bricks contributing to "clutch power" said to be essence of Lego building block system--On totality of evidence, Lego Indicia functional in all respects save for inscription of mark Lego on each stud--That functionality relating primarily or essentially to wares themselves: Remington Rand Corp. v. Philips Electronics N.V. (1995), 64 C.P.R. (3d) 467 (F.C.A.)--By reason of that conclusion alone, Lego Indicia cannot be distinguishing guise in common law sense of that term, as dispose of action, but, in case of appeal, other aspects of case considered hereafter--Subject-matter claimed and/or disclosed in opposed to sense provided by Act, s. 2--Therefore, to extent that defendant has adopted, used Lego indicia, it has not contravened Act, s. 7(b)--That conclusion sufficient to expired patent--Plaintiff herein "evergreening" by seeking protection beyond expiration of patent monopoly through passing-off action (see Canadian Shredded Wheat Co. v. Kellogg Co., [1938] 1 All E.R. 618 (P.C.))--And given conclusion above that Lego Indicia functional in all respects save for inscription of mark Lego on each stud, no further protection available through passing-off action-- Distinctiveness, use of Lego Indicia as trade-mark-- Components of passing-off action: existence of goodwill, deception of public due to misrepresentation, actual or potential damage to plaintiff: Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120--Lego group has goodwill in sense of benefit, advantage of good name, reputation, connection of its business--On evidence, Lego Indicia not inherently distinctive, thus inherently capable of contributing to Lego group's goodwill--Lego group's goodwill deriving in whole or in part from Lego Indicia, but impossible to quantify contribution--Unnecessary to do so, as any contribution sufficient to warrant turning to second element of test for passing-off: deception of public due to misrepresentation-- Against test of "ordinary person using ordinary care" in market for construction toys, plaintiffs have met onus of establishing likelihood of confusion, actual confusion-- Confusion not result of deliberate strategy on part of defendant--Plaintiffs have failed to meet onus of establishing deception of public by defendant due to misrepresentation on its part--As to damage, beyond doubt that plaintiffs (more broadly Lego group) have suffered damage by reason of entry of defendant into Canadian construction toy market with its Micro Mega Bloks line of construction toys--Therefore, plaintiffs have failed discharge onus on them with regard to all elements required to establish defendant has contravened statutory passing-off scheme represented by Trade-marks Act, s. 7(b)--Although issues of estoppel, laches, acquiescence moot, Court finding mere delay not enough to deprive plaintiff of his legal rights--As to limitation, relevant prescription period 6 years, action therefore not barred by that limitation-- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 "distinguishing guise", "trade-mark", 7(b)--Federal Court Act, R.S.C., 1985, c. F-7, s. 20(2) (as am. by S.C. 1990, c. 37, s. 34).