In the October 2003 issue of IP Perspectives, we reported on the July 14, 2003 decision of the Federal Court of Appeal in Kirkbi AG v. Ritvik Holdings Inc. [2003 FCA 297]. In that case, in a 2:1 decision, the Court held that the shape of the basic LEGO brick could not be protected as a trademark because it was primarily functional. As reported in the June 2004 issue of IP Perspectives, the Supreme Court of Canada has agreed to hear an appeal of the Federal Court of Appeal’s decision. Furthermore, the Supreme Court has recently permitted the respondent to raise an additional issue which was not raised in the lower courts. This issue relates to the Constitutional validity of the provision of the Federal Trademarks Act on which the plaintiff's action was based. The provision at issue is paragraph 7(b) of the Trademarks Act, which is considered to be the statutory equivalent of the common law cause of action called passing off. This provision gives jurisdiction to the Federal Court of Canada to hear cases of this kind and to dispose of them using its full national powers. A ruling that this provision is unconstitutional could deprive the Federal Court of an important area of its jurisdiction in trademark matters, and could even adversely affect, by implication, the constitutionality of other provisions of the Trademarks Act. The addition of this issue to the appeal has raised the stakes considerably for the parties to the LEGO action, for the entire Canadian trademark community, and indeed for anyone using trademarks in Canada.
A. David Morrow, Ottawa