Harley-Davidson Throttles Up In Canadian Trade-mark Dispute

On March 4, 2014, the Federal Court issued its decision in H-D USA and Harley Davidson Motor Company Inc v Jamal Berrada et al, 2014 FC 207, in which Justice Scott found in favour of the Plaintiffs (together, Harley-Davidson) in a battle over the rights to the mark SCREAMIN’ EAGLE for clothing. Harley-Davidson is a US motorcycle manufacturer known for its classic heavyweight cruisers. Almost any motorcyclist can spot a “Harley” when they see one (or hear one). Harley-Davidson is the owner of several non-Canadian trade-mark registrations covering SCREAMIN’ EAGLE for clothing. However, in Canada, the Harley-Davidson mark SCREAMIN’ EAGLE is instead registered in association with motorcycle parts and accessories. In this case, Harley-Davidson sought declarations from the Court including: (i) Harley-Davidson is entitled to sell clothing with the mark SCREAMIN’ EAGLE in association with its registered trade-mark HARLEY-DAVIDSON; and (ii) Harley-Davidson does not infringe any rights of the Defendants. Since the 1990s, the Defendants have owned and operated two clothing stores in Quebec and at times have operated from similar stores elsewhere in Canada, from which they have sold SCREAMIN’ EAGLE clothing. They were the owners of Canadian trade-mark registrations for both SCREAMING EAGLE and SCREAMIN’ EAGLE for clothing. However, those registrations were expunged due to an inadvertent failure to pay renewal fees. Allowing these registrations to be cancelled, particularly during the course of this litigation (this case began in 2007; expungements were in 2008 and 2011, respectively), was unfortunate. However, the Defendants remained the owners of one subsisting registration for the mark SCREAMING EAGLE in association with the service of operating retail clothing stores. The Defendants sought injunctions and declarations of their own from the Court going to their entitlement to use the mark and Harley-Davidson’s infringement of their rights under the Trade-marks Act, sections 19, 20, 22 and 7(b). Justice Scott was not persuaded that the Defendants’ evidence and remaining trade-mark registration (for operating clothing stores) supported their counterclaim. With limited brand recognition and their most significant trade-mark assets expunged, to show any kind of confusion or depreciation of the Defendants’ brand in the eyes of the public in light of Harley-Davidson’s use of the mark was clearly going to be an uphill battle. Considering the strength of Harley-Davidson’s case, they may have hit the throttle a little hard when they argued, successfully, that the appropriate context for evaluating depreciation and confusion in this case was in a hypothetical group of Harley-Davidson-owning motorcyclists, instead of a more diverse segment of the population. Notably, the judgment of Justice Scott was not the precise declaration that Harley-Davidson sought, but was consistent with the general scope of his decision: Harley-Davidson will be entitled to use the mark on clothing in association with its mark HARLEY-DAVIDSON “throughout Canada but exclusively at HARLEY-DAVIDSON dealerships” [emphasis added]. Summary by: John Lucas