Again Lego finds itself under an attack from Mega Brands, a Montreal-based competitor and maker of Mega Bloks. This time – in U.S. District Court in the Central District of California.

Lego owns a U.S trademark for the design of its world-famous blocks. Mega Brands claims that the trademark registration should be invalidated, which would allow Mega Brands to freely export its products to the United States.

The foundation of the claim is that what Lego has is not really a trademark. Rather, it is an attempt to obtain patent-like protection under the guise of a 3D trademark.

In simple terms, patents protect underlying ideas of inventions, while trademarks protect distinctive elements that allow the public to distinguish products and services of one business from products and services of another business. Trademark rights do not expire (as long as the trademark owner renews the registration on time), while patent rights only last for 20 years.

Common law courts have developed the so-called doctrine of functionality which prevents registration as trademarks of 3D objects, if such a registration would amount to protecting the functional side of these objects.

In Canada, the Trade-Marks Act makes it clear that “No registration of a distinguishing guise interferes with the use of any utilitarian feature embodied in the distinguishing guise.”

Interestingly enough, one of the leading cases in Canada dealing with the doctrine of functionality was the decision of the Supreme Court of Canada in Kirkbi AG v. Ritvik Holdings Inc., which happened to involve the same LEGO blocks.

Mega Brands’ representative stated: “Lego’s patents expired more than 20 years ago and courts around the world, including the United States, have ruled against its attempts to use trademark law for functional elements. Its claims have been dismissed by lower courts in numerous countries.”

In fact, it’s a tough call. Are the LEGO blocks nothing more than a “clever locking system” in the words of Mr. Justice LeBel? If the answer is no, what is it in the shape of the LEGO blocks that distinguishes them from any other blocks that would employ the same locking system? Can Lego protect anything but its own name and the higher-level designs?

Leaving the law aside for a minute, do you think it’s fair that Lego should lose its exclusive right to manufacture and sell its blocks? Please leave your comments.

As part of my work on the website, I continue uploading more and more MLML (Mincov Legal Markup Language) formatted cases.

This time I added the following Supreme Court of Canada cases:

Apple Computer Inc. v. Mackintosh Computers Ltd. – a 1990 case where SCC found that programs embedded in the silicon chip are a reproduction of the programs in assembly language and as such are protected by copyright.

Compo Co. Ltd. v. Blue Crest Music et al. – a very unfortunate 1979 case where SCC sealed the door to alternative theories of origins of copyright in Canada by finding that it is nothing but a statutory invention.

Bishop v. Stevens – a 1990 case where SCC found that The right to broadcast a performance under s. 3(1) of the Copyright Act does not include the right to make “ephemeral” recordings beforehand for the purpose of facilitating the broadcast.

Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Limited – a 1953 case where SCC confirmed that “authorize” means to “sanction, approve and countenance” and found that “something more” than the mere supply of the equipment required to infringe is needed to find the intermediary responsible.

Robertson v. Thomson Corp. – a 2006 SCC case which discusses the issue of reproducing newspaper articles in digital form within and outside the context of the whole newspaper issue.

Consumers Distributing Co. v. Seiko – a 1984 parallel importation case, where SCC found that selling authentic Seiko watches in Canada outside the authorized channels does not constitute passing off.

Many more to come.