November 2005
Lego hit a brick wall in their attempt to “Blok” competitor
A recent Canadian court case has seen Lego fail in a bid to prevent a company trading as “Mega Bloks” from selling blocks of the same size, shape and interlocking structure as the iconic Lego bricks. Lego had issued proceedings on the basis of alleged infringement of its Canadian shape trade mark.
Lego had attempted to use a registered trade mark depicting the shape of the product to also provide monopoly rights in the 3-D design and therefore functional use of the product.
The claim was, however, barred by what the Canadian legal system refers to as the doctrine of functionality. This doctrine establishes that a shape mark which goes beyond distinguishing the visual appearance of a product from the functional structure of the product itself is not registrable.
Lego has previously owned several patents in various territories protecting the interlocking brick invention all of which have now expired thereby forcing Lego to seek other ways of protecting their position in the market.
The ruling means that in Canada Mega Bloks is now able to sell its blocks (which are the same size and bear the same pattern and can therefore be used interchangeably with Lego bricks). This may not automatically be the case in all territories however.
Lego's claim of passing off in the above case was also rejected on the basis that the court felt that the bricks were not distinctive enough and are now common in the market.
BRIFFA Comment:
It is unsurprising that the court found the trade mark in question to be invalid since had this technique been permitted it would open up a loophole whereby rights owners could protect a functional design for an unlimited period of time whereas with traditional forms of IP protection such as patents and registered designs the monopoly right is awarded on the basis that it will be for a fixed period of time after which the design or invention shall be open to use by anyone.
The opinion on whether Lego bricks can be protected has varied around the world. Earlier this year a Greek court found (on appeal) that the design cannot be protected whereas in the same month a Dutch court found that passing off had occurred in that there was a likelihood of confusion between the products.