Dispute timeline
It did not take long for Lego to react when it discovered the use of its name on Zuru’s packaging.
US lawyers for Lego sent “cease and desist” letters to Zuru and The Warehouse in November and December 2018.
The Warehouse took the Zuru bricks off the shelves and they were replaced with products that contained the general compatibility statement and did not mention Lego.
However, Zuru reintroduced the Lego reference on its branding in 2021, leading to another round of legal letters and warnings between the two toy companies and The Warehouse.
Zuru sought a High Court ruling to declare its packaging did not infringe on Lego’s trademark.
The Kiwi rich-listers lost and then appealed the ruling.
In an Appeal Court judgment released today, it was found Zuru had been successful and its conduct did not infringe on Lego’s trademark.
Justices Rebecca Ellis and Matthew Palmer said they disagreed with the High Court’s conclusion that Zuru used Lego as a trademark, because the New Zealand company used the mark to distinguish its own products from others in the field and not in a purely descriptive manner.
“While it may be that the fact Zuru’s bricks are compatible with Lego bricks does (as a matter of fact) distinguish them from others, telling consumers this does not constitute use of the Lego mark in a manner that renders it likely to be taken as indicating the origin of Zuru’s bricks.
“In our view, when use of Lego is seen in its full context, the consumer would think that Zuru’s bricks were Max Build More bricks.“
Ellis and Palmer said “only an implausible chain of reasoning” would cause a shopper to be misled or confused by the compatibility statement.
“Consumers in the 21st century are not easily fooled, are brand-aware and would not reasonably think Zuru’s products were made by or associated with Lego.”
They said consumers would recognise toys displayed under the Max Build More bricks label were different products to those made by Lego.
Lego has been manufacturing building bricks for nearly 90 years and sells them in 140 countries.
Zuru has built up a multimillion-dollar global toy business over the past two decades. Most of its manufacturing and staff are in China and Hong Kong.
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