H-D U.S.A., LLC v. Berrada

H-D U.S.A., LLC v. Berrada

Defendants failed to prove the required elements of their claims under para 7(b) and ss.19,20,22: HD’s prior and pervasive use of SCREAMIN’ EAGLE in connection with HARLEY-DAVIDSON, greater goodwill and distinct branding (BAR AND SHIELD, orange/black house marks), absence of evidence of consumer confusion or measurable depreciation or damages, and Defendants’ lack of compelling, territorially wide recognition meant there was no likelihood of confusion or depreciation; accordingly HD was entitled to sell SCREAMIN’ EAGLE clothing in Canada in association with HARLEY-DAVIDSON dealerships and Defendants’ counterclaims were dismissed.

Citation
2014 FC 207
Parties
Plaintiff (defendant by Counterclaim): H-D U.S.A., LLC; Plaintiff (defendant by Counterclaim): Harley-Davidson Motor Company, Inc.; Defendant (plaintiff by Counterclaim): Jamal Berrada; Defendant (plaintiff by Counterclaim): 3222381 Canada Inc.; Defendant (plaintiff by Counterclaim): El Baraka Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
4 March 2014
Procedural Posture
Trade Marks / Passing Off / Judgment
Outcome
Plaintiffs’ action granted; Defendants’ counterclaim dismissed in part and wholly dismissed on asserted trade-mark causes of action
Legal Topics
Passing Off, Dilution/depreciation of Goodwill, Likelihood of Confusion, Bad Faith, Trade Mark Registration/expungement
Source Language
English
Intellectual Property Trade Marks Unfair Competition Passing Off Dilution/depreciation of Goodwill Likelihood of Confusion Bad Faith Trade Mark Registration/expungement

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Parties

H-D U.S.A., LLC

Plaintiff (defendant by Counterclaim)

Harley-Davidson Motor Company, Inc.

Plaintiff (defendant by Counterclaim)

Jamal Berrada

Defendant (plaintiff by Counterclaim)

3222381 Canada Inc.

Defendant (plaintiff by Counterclaim)

El Baraka Inc.

Defendant (plaintiff by Counterclaim)

Procedural Posture

Trade Marks / Passing Off / Judgment

Legal Issues

  1. 1 Plaintiffs’ rights/reputation/goodwill in SCREAMIN’ EAGLE
  2. 2 Defendants’ rights/reputation/goodwill in SCREAMING EAGLE/SCREAMIN’ EAGLE
  3. 3 Plaintiffs’ rights/reputation/goodwill in HARLEY-DAVIDSON marks

Ratio Decidendi

Defendants failed to prove the required elements of their claims under para 7(b) and ss.19,20,22: HD’s prior and pervasive use of SCREAMIN’ EAGLE in connection with HARLEY-DAVIDSON, greater goodwill and distinct branding (BAR AND SHIELD, orange/black house marks), absence of evidence of consumer confusion or measurable depreciation or damages, and Defendants’ lack of compelling, territorially wide recognition meant there was no likelihood of confusion or depreciation; accordingly HD was entitled to sell SCREAMIN’ EAGLE clothing in Canada in association with HARLEY-DAVIDSON dealerships and Defendants’ counterclaims were dismissed.

Court Disposition

Plaintiffs’ action granted; Defendants’ counterclaim dismissed in part and wholly dismissed on asserted trade-mark causes of action

Orders

  • Plaintiffs’ action is granted
  • Plaintiffs are entitled to distribute, advertise, offer for sale and sell collateral items, including clothing, in connection with their trade-mark SCREAMIN’ EAGLE, in association with their registered trade-mark HARLEY-DAVIDSON, throughout Canada but exclusively at HARLEY-DAVIDSON dealerships