Smart & Biggar Prevails In Precedent Setting Trade-Mark Trial On Behalf Of Harley-Davidson

In a March 4, 2014 decision (H-D USA LLC et al v Jamal Berrada et al, 2014 FC 207), the Federal Court recognized that Harley-Davidson may sell its SCREAMIN' EAGLE brand of clothing and collateral items in Canada in connection with its well known HARLEY-DAVIDSON trade-mark, notwithstanding another party's trade-mark registration for SCREAMING EAGLE for use in association with the operation of retail clothing stores, as well as its common law rights arising from the sale of SCREAMING EAGLE clothing for more than 20 years. This decision should be of particular interest to owners of well known brands as it underscores the ability to negate confusion by closely associating a sub-brand with a strong and widely recognized house mark. The decision also provided one of the most comprehensive reviews by a Canadian court of a dilution claim based upon section 22 of the Trade-Marks Act.