Canadian Journal of Law and Technology


Sean Robertson


intellectual property litigation, Lego, case comment, Federal Court


This article will discuss the case at the trial and appellate levels. It will specifically address the underlying policy debate between the majority and the dissenting decisions at the Federal Court of Appeal. The author will compare this debate to two similar international cases involving Lego’s infamous intellectual property litigation. With this recent finding in the 40-year-old saga of international case law surrounding Lego’s trade-mark enforcement strategy, the Appeal Division of the Federal Court of Canada joins the ranks of several other courts that have similarly excluded protection for Lego based on the doctrine of functionality. The comment concludes with some suggestions as to the implications of this decision in respect of its implicit endorsement of branding and marketing, especially in the context of functional modular products, such as Lego. In seeking to uphold competition by allowing others to use the utilitarian elements of expired patents, trade-mark law raises the potential for competitors to ‘‘piggy-back’’ on the goodwill of established competitors. This has created a situation where branding and marketing have become vital for incumbent manufacturers wishing to maintain proprietary protection. As a result of Kirkbi, the makers of functional modular products have limited prospects of maintaining their monopoly rights through trade-mark protection outside of adopting an aggressive branding and packaging strategy, which could include a distinctive ornamental dress on the ware itself or its packaging (i.e., a distinguishing guise). We will briefly question whether the innovation and competition imperative impelling intellectual property policy is served by a regime that endorses branding and its potential inefficiencies.