Kirkbi AG v. Ritvik Holdings Inc.
T-2799-96
Gibson J.
23/6/98
35 pp.
Application for partial summary judgment against plaintiffs-Plaintiffs engaging in design, manufacture, sale of children's building toys, accessories sold under trade mark "Lego"-"Lego" brick or block design, composition same since 1958-Plaintiffs alleging bricks having distinctive look, making them immediately identifiable to purchasers, users-Seeking trade mark protection for this "look" in design referring to as "Lego Indicia trade mark"-Defendant manufacturing, distributing, selling toy construction bricks in association with "Mega Blocks" trade mark, including "Micro" line of bricks similar, if not identical in size, shape, often colour, to "Lego" bricks-"Micro" line first marketed in Canada in 1991-Packages state "works with leading brand", "works with other brands"-Amended statement of claim alleging defendants applying "Lego Indicia trade mark" to its building bricks, other parts since approximately 1991-Alleging breach of Trade-marks Act, ss. 7(b), (d), 22-Amended statement of defence denying "Lego Indicia" trade mark; pleading at most Lego Indicia trade mark clearly descriptive of sole or primary functional feature of Lego components; Lego Indicia trade mark solely or primarily functional, not properly protectable as trade mark-Defendants alleging, if trade mark rights can be acquired in "Lego Indicia trade mark" not distinctive of Lego or of Lego products-Denying engaging in misleading advertising-In relation to s. 7(b) claim, defendants relying on evidence directed primarily to alleged relationship between "Lego Indicia trade mark" and disclosures, claims, illustrations of three expired Canadian patents-Defendants relying on Thomas & Betts, Ltd. v. Panduit Corp. (1997), 74 C.P.R. (3d) 185 (F.C.T.D.) for proposition patentee cannot assert trade mark rights to way expired patent directing public to make invention-In granting summary judgment in that case, Richard J. citing U.S. Federal District Court decision between same parties on same subject, since reversed on appeal-Defendants not filing any evidence in response to allegations regarding similarity of trade dress and get-up, impact of use of expressions "works with leading brand", "works with other brands"-Application dismissed-Federal Court Rules, RR. 432.1-432.7 governing applications for summary judgment-R. 432.3(1) mandating Court shall grant summary judgment if satisfied no genuine issue for trial-Onus on applicant for summary judgment carrying with it evidentiary burden where, as on this application, substantial dispute as to facts or inferences to be drawn therefrom-Evident from opening words of R. 432.2(1) if evidence not presented by applicant on any aspect or ground of motion for summary judgment where substantial dispute as to facts or allegations of inferences to be drawn therefrom, no burden transferred to respondent-In absence of any such evidence, adverse inference drawn from failure to lead evidence-Taken as whole, evidence adduced by defendants on this application unimpressive-Appears to speak to Lego's claim under s. 7(b), but to bear no relationship to claims under ss. 7(d), 22-Defendants failed to meet onus on it on this application-Adverse interest drawn against defendants-Plaintiffs satisfying requirements of R. 432.2(1), demonstrating genuine issues for trial with respect to each of claims under s. 7(b), (d), 22(1)-Although evidence unimpressive, that finding alone not warranting order granting costs out of normal range or providing for payment of costs forthwith-Motions for summary judgment, in appropriate cases, should not be discouraged by extraordinary awards of costs-Plaintiffs awarded costs on ordinary scale-Federal Court Rules, C.R.C., c. 663, RR. 432.2 (as enacted by SOR/94-41, s. 5), 432.3 (as enacted idem)-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 7, 22.