Kirkbi AG v. Ritvik Holdings Inc.
| Kirkbi AG v. Ritvik Holdings Inc. | |
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| Hearing: March 16, 2005 Judgment: November 17, 2005 |
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| Full case name | Kirkbi AG and Lego Canada Inc. v. Ritvik Holdings Inc./Gestions Ritvik Inc. (now operating as Mega Bloks Inc.) |
| Citations | 2005 SCC 65, [2005] 3 SCR 302 |
| Docket No. | 29956 |
| Prior history | APPEAL from a judgment of the Federal Court of Appeal (Rothstein, Sexton and Pelletier JJA), 2003 FCA 297, [2004] 2 FCR 241 (14 July 2003), upholding a decision of Gibson J 2002 FC 585 (24 May 2002), Federal Court (Canada) |
| Ruling | Appeal dismissed |
| Holding | |
| Kirkbi’s passing‑off claim under s. 7(b) must be dismissed, as is barred by the application of the doctrine of functionality. | |
| Court Membership | |
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Chief Justice: Beverley McLachlin Puisne Justices: Michel Bastarache, Ian Binnie, Louis LeBel, Marie Deschamps, Morris Fish, Rosalie Abella, Louise Charron |
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| Reasons given | |
| Unanimous reasons by | LeBel J |
| Laws Applied | |
| Trade-marks Act (R.S.C. 1985, c. T-13, s. 7(b)) | |
Kirkbi AG v. Ritvik Holdings Inc., popularly known as the Lego Case, is a decision of the Supreme Court of Canada. The Court upheld the constitutionality of section 7(b) of the Trade-marks Act which prohibits the use of confusing marks, as well, on a second issue it was held that the doctrine of functionality applied to unregistered trade-marks.
While s. 91 of the Constitution Act, 1867 gives the Parliament of Canada jurisdiction over copyright and patent matters, it is silent with respect to trademarks. However, the Judicial Committee of the Privy Council and the Supreme Court of Canada have both suggested in their jurisprudence that the Trade-marks Act is a valid exercise of the federal trade and commerce power.
Kirkbi AG, a member of The Lego Group, previously held patents in the design and form of Lego blocks, which had expired in Canada and elsewhere. Ritvik produced the pieces known as Mega Bloks. Kirkbi attempted to register the design of their blocks as a trade-mark but was denied by the Registrar of Trade-marks. Kirkbi then asserted unregistered trade-mark rights against Ritvik through an unregistered trade-mark in the distinctive orthogonal pattern of raised studs distributed on the top of each toy-building brick, and claimed relief under s. 7(b) of the Act, as well as under the common law doctrine of passing off.
Ritvik denied any breach under the Act or at common law and counterclaimed, seeking a declaration that it was entitled to continue to make, offer for sale and sell in Canada its blocks and related parts.
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