Harley-Davidson Motor Company, Inc. v. Montréal Production Inc., 2023 FC 1727 consisted of the appeals of decisions from the Trademarks Opposition Board in two proceedings under section 45 of the Trademarks Act. In the first proceeding, the Registrar of Trademarks amended the registration for the HARLEY-DAVIDSON trademark (TMA649,923) to delete a number of goods from the list of registered goods. In the second proceeding, the Registrar amended the registration for the HARLEY trademark (TMA294,796) to delete motorcycles from the list of registered goods.
Before the Federal Court, the applicant filed new affidavits containing new evidence, as allowed by subsection 56(5) of the Trademarks Act. The Federal Court found that the new affidavits were more comprehensive than those before the Registrar and had probative significance and would have materially affected the Registrar’s findings. Accordingly, the Federal Court decided both matters on a de novo basis.
The HARLEY-DAVIDSON appeal
In the appeal concerning the HARLEY-DAVIDSON trademark, the Federal Court was satisfied that the evidence demonstrated use of the mark in association with the majority of the goods in question during the relevant period. The Federal Court set aside the decision of the Registrar to the extent that it amended the HARLEY-DAVIDSON trademark registration to delete those goods.
However, the Federal Court concluded that the HARLEY-DAVIDSON mark had not been used in association with bed tents and bed mats. The only evidence before the Federal Court related to camping tents and sleeping bags. According to the Federal Court: “There was no evidence put forth by the Applicant that bed tents are camping tents and that bed mats are sleeping bags. My understanding of a bed tent is a tent that either sits upon or attaches to a bed or mattress, and a bed mat is something that prevents objects from sliding around in the bed and/or protects the bed or underlying surface from any spills.” The Federal Court distinguished this situation from that in Levi Strauss & Co. v. Canada (Registrar of Trade-Marks), in which the Federal Court had indicated that one must not be “astutely meticulous” in interpreting the language used in the statement of goods. The ambiguity that underpinned the Federal Court’s observation in Levi Strauss (whether a tomato is a fruit) does not arise in the case of bed tents and bed mats, which do not serve the same purpose as camping tents and sleeping bags.
Similarly, the Federal Court concluded that the HARLEY-DAVIDSON mark had not been used in association with either safes or vaults. Although the applicant’s affidavit declared that “at least one safe/vault bearing the Trademark was sold in Canada during the Relevant Period”, this statement was unclear as to which good was sold and there was no evidence demonstrating the use of the mark in this context. The Federal Court did not accept evidence pertaining to metal storage units (which are storage lockers without build-in locking mechanisms, similar to school lockers), because the Court’s understanding was that “safes and vaults […] are secure because they comprise a build-in locking mechanism.”
The HARLEY appeal
In the appeal concerning the HARLEY trademark, the Federal Court concluded that there was sufficient evidence to demonstrate that the HARLEY mark was used on the packaging for motorcycles sold to Harley-Davidson dealerships in Canada during the relevant period. The Federal Court set aside the decision of the Registrar to the extent it amended the HARLEY trademark registration to delete motorcycles.
The Federal Court awarded costs to the applicant, who was more successful than not in the HARLEY-DAVIDSON appeal and successful in the HARLEY appeal. In addition, the Federal Court ordered that the respondent be solely responsible for the costs for the simultaneous interpretation, which went unused because the respondent did not attend the hearing and did not provide notice that it would not be attending the hearing.