Harley-Davidson Manages to Stop Sales of a (Trademark) Infringing Bike Built With Some of its Genuine Parts

The Canadian Federal Court recently handed us an interesting decision, in H-D U.S.A. c. Varzari (2021 FC 620), in which it enjoined an individual (and his business) from continuing to offer a sort of Harley inspired motorcycle, built using a custom frame and genuine Harley-Davidson parts.

Though the above sounds a little outrageous, the story is of course a little more complicated than that and, NO, we’re not dealing with the owners of the Harley-Davidson trademarks nuking the harmless personal project of a biking enthusiast. Instead, the case deals with an individual who visibly really likes H-D bikes and who decided not only to build his own version of that type of motorcycle, but also started selling it, under a name referring expressly to Harley-Davidson, in addition to using a logo clearly copied from one of HARLEY’s, in addition to using the iconic orange color for the frame, and opting to HARLEY-DAVIDSON parts and, maybe, claiming he did so a little too enthusiastically in his promotional materials.

The bike at issue was initially offered as the “Harley Davidson Willie G Edition”, a name which the defendant changed upon being contacted by HARLEY to “The ‘H’ Edition”. To give  you an idea of what we’re dealing with, here is a picture of the bike at issue, including the copycat shield logo and the orange color reminiscent of Harley’s iconic color:

So as to set the stage as to where this is headed, I should mention HARLEY owns Canadian trademark registrations as to several logos, including the following, in connection with motorcycles and various types of parts and accessories:

Not surprisingly, the court finds several instances of infringement here, and enjoins the defendant from continuing with his sale of the motorcycle model at issue. Given that the court concludes that orange for bikes qualifies as a common law trademark, coupled with the issue of the logo itself, infringement seems easy to justify in such a case but isn’t all that interesting.

However, what IS worth mentioning is the treatment by the Federal Court in this case of the issue of the inclusion (in the “The ‘H’ Edition” bike) of genuine HARLEY-DAVIDSON parts, in addition to a custom frame that the enthusiast designed and presumably had built to imitate a Harley-type bike. According to the judgement at issue, inclusion of such genuine parts, along with repeatedly claiming the parts of this bike came from HARLEY, contributed to the giving the average person an overall impression that the whole motorcycle may have been produced by or for HARLEY, or at the very least under its authority.

For the court, the fact that the defendant conspicuously included genuine HARLEY parts that were of course visible in the end-product, contributed to giving an overall impression to the average buyer that the whole machine was a HARLEY-DAVIDSON, even though that specific name and mark did not appear on the cycle itself.

If you look at the picture above, it seems the bike may have been offered without any markings showing any original brand or name, perhaps leaving potential buyers to draw a conclusion as to the origin of the bike by seeing a H-D-like shield on the frame along with the orange color, as well as various HARLEY marks imprinted on (genuine) components like handlebars, foot pegs, etc. Indeed, looking at the resulting product, the Federal Court judge had little difficulty agreeing that an average consumer would more than likely conclude that this bike came from HARLEY-DAVIDSON, including because of the display and use of several of HARLEY’s mark on the machine and its components. Though the court rejected the suggestion that the shape of the frame itself was a problem, having found a likelihood of confusion with several registered and unregistered marks of HARLEY, it made sense to award an injunction as well as damages against the infringer.

Though the court stopped well short of saying that including genuine HARLEY parts was a problem in the general sense, it did state that, in this particular case, the presence of those genuine (branded) components WAS part of the reason for the probable confusion. Looking at the overall resulting bike, one would be naturally lead to the conclusion that this bike had something to do with HARLEY, above and beyond just supplying parts, hence the infringements.

Notwithstanding the foregoing, however, after reading the decision, I don’t think anyone should read into it any major change of Canadian trademark law in general, or that relating to trademark rights exhaustion in particular. As has always been the case, anyone may continue to resell branded goods without the need to normally worry about looking over your shoulder, so to speak. At law, generally, it remains that reusing of reselling branded products, even to make something new is NOT a problem. It is the case in the U.S. and in Canada, and that rule isn’t going anywhere.

What’s new here, I think, is a willingness by a court to read into the (re)use of numerous genuine (branded) parts, as components for a new thing, an attempt at creating an overall impression that the whole thing (i.e. the bike) was produce by or under the authority of the original trademark owner. Is this likely if a single branded component has been used? Likely not. Is this likely if the resulting product is itself adequately (clearly) branded with a non-infringing mark? Probably not. Is this likely if a resulting product is showing a patchwork of third-party marks on components? Definitely not. etc.

So, though the result of this case seems interesting, I don’t think we should read too much into it. The theory of trademark rights exhaustion is alive and well in Canada. Rest assured.

SUBWAY vs. BUDWAY: Federal Court Sides with Sandwich Restaurants Against Cannabis Store

The Federal Court recently provided us with an excellent example of a company acting to curb use of a third-party trademark inspired from its own, in Subway IP LLC v. Budway, Cannabis & Wellness Store (2021 FC 583).

The facts at issue may have started by a couple of guys watching the sitcom How I Met Your Mother, and hatching a plan to open a store to sell cannabis-related products, the name of which would be a sort of play on words on a well-known restaurant chain and a word suggestive of pot selling. The unfortunate name they landed on was BUDWAY, which they then elected to present, graphically, using a logo they designed based on the very logo the SUBWAY chain uses. If you’re curious, the result was essentially the following, showing this “new” logo side-by-side with the original:

As we can all see (and as agreed by the court), the BUDWAY logo was more than likely purposely designed to imitate SUBWAY’s own, taking key features of that logo (including shape, font and arrows at the end of certain letters), even going so far as to use the green color often used throughout SUBWAY restaurants. In short, the defendant copied a third party’s name and logo, basically parodying it for their own purposes. Ah ha, funny.

Thought it may have been meant as a sort of joke, the Federal Court judge agreed with Subway restaurants that, at law, this was no laughing matter. Indeed, Subway managed to show how use of this “new” trademark was likely to cause confusion with their own trademark, constituted infringement, and how it was even likely to lead to the depreciation of the goodwill associated with the business tied to the SUBWAY trademark. The plaintiff managed to show evidence that BUDWAY store sold edibles, including cookies, which turns out to be problematic because of the presence of cookies in Subway trademark registrations. To boot, the evidence also showed that Budway created and used promotional materials showing a character in the form of a sandwich. Both these overlaps allowed the court to find sufficient commonalities and a resulting likelihood of confusion, etc.

Consequently, the court found infringement, passing off and a risk of depreciation of goodwill. Though the damages awarded were somewhat modest, all materials bearing the mark were confiscated, Budway also had to pay for costs, and the business is now enjoined from using the BUDWAY trademark.

In short, Subway managed a slam dunk, only failing to get punitive damages -something the court felt was not quite justified even under these circumstances. In the process, the court provides one with one more example of the fact that parody is NOT something Canadian trademark law allows. Trademark infringement remains infringement, even if the creator of the 2nd mark may have meant it as a tongue-in-cheek reference to another mark.

Eh, who knew: if you start a business, maybe it’s not the best idea to start by obviously copying a third party’s mark, including as to its name AND logo, and then compounding the problem by making references to the other party’s products in your promotional material, as plainly visible on social media. Whether your business is the same of the original trademark owner’s, or not, too clearly referencing another mark is ripe with risks.

Piece of Cake! Vachon Wins HOSTESS Infringement Lawsuit for Bread

The Federal Court recently rendered a decision that seems worth discussing as a to a trademark infringement matter involving the (relatively) well known Québec bakery Vachon. The decision at issue, Boulangerie Vachon Inc. v. Racioppo (2021 FC 308) centers primarily on a matter of trademark confusion between a business known for its cakes, pies and the like, and a new comer on the Canadian market that elected to go with the HOSTESS trademark to sell bread, knowing Vachon owned the mark for other types of products.

The piece of litigation at issue started when the owner of the defendant corporations was given the impression that Vachon (and its predecessor in title), notwithstanding owning the HOSTESS trademark in Canada, wasn’t interested in bread products. Seeing this, the defendant started selling bread in Canada, which it did from 2016-2017 to 2019, only to realize too late that Vachon had in fact started to sell bread before his business did. See where this is headed?

Yup, you read this right: someone saw the mark and who it belonged to and decided that since Vachon didn’t (then) sell bread, it was fair game to do so through his own company. After all, there’s no link between bread and cakes right? Yeah, completely different things. I’m guessing this guy did not obtain advice from counsel (or an agent) before making his decision.

The case is a pretty good example of good infringement proceedings, in a case where the marks are essentially the same (notwithstanding different logos) and the goods are definitely in the same area, including by being sold in the same types of stores, generally in proximity on store shelves. Not too surprisingly, the judges ends-up siding with Vachon and agreeing that, under circumstances such as these, confusion is more than likely. Yeah, HOSTESS for bread vs. HOSTESS for cakes, cookies, muffins, etc. Who could have foreseen this coming?

One thing that seems worth mentioning as this judgment, is the court agreeing that not only was this a case of infringement but also one of goodwill depreciation, under Section 22 of the Trademarks Act. As you may know, though this is often tried by plaintiffs, it is not something Canadian courts have traditionally been too fond of granting. This time, however, the Federal Court judge agreed that use of the HOSTESS trademark on bread products from a source other than VACHON did not just infringe the rights of the mark owner but that it also depreciated the value and the distinctive character of the original mark. This is encouraging for mark owners in Canada.

That said, I should point out the end result is a little lackluster, as the Federal Court awards an injunction (of course) and… $10,000 in nominal damages. Given the fairly limited scope of the infringing activities (something like $70,000 in sales, and profits around $5,000), the court felt this was reasonable amount, under the circumstances.

Finally, one other point is somewhat unusual with this case, with the plaintiff attempting to obtain that the companies’ principal be personally held liable, something Canadian courts are often reluctant to do. Not too surprisingly, the judge held this case did not justify finding Mr. Racioppo personally liable. Though Vachon tried to argue the individual was clearly to blame for his recklessness (we knew of VACHON’s trademark full well), in the end the court elected to consider the principal’s behavior did not necessarily reach the level of culpable behavior that would justify holding him liable. For the court, one could look at this fact-pattern as a simple case of an ordinary course business decision that wasn’t entirely devoid of rational basis, if not for Mr. Racioppo’s mistaken belief that a competitor not making a specific type of product (i.e. bread) made it fair game for him and his business.

So, the lesson here, I guess, is that you shouldn’t assume that the listing of products and services in a registration are all there is to it. Sure, looking at the register is useful, but one should always remember that confusion takes much more than just the product listing into consideration.