Judge Rules That Harley-Davidson Can Use “Screamin’ Eagle” Trademark On Clothing In Canada

lawDespite the ownership and use for 20 years of a “Screaming Eagle” trademark by a Canadian clothing store chain, the Federal Court of Canada ruled on March 11 that Harley-Davidson could continue to use its trademark for clothing in Canada, but exclusively at Harley-Davidson dealerships.

“The ruling will be of considerable interest to owners of well-known or famous brands, as it recognizes that Harley-Davidson’s Screamin’ Eagle trademark is unlikely to cause confusion despite the Canadian clothing stores’ 20-year history with a similar trademark” said Mark K. Evans of Smart & Biggar, Toronto, who represented Harley-Davidson in the case.

screamingeaglePlaintiff failed to meet the Supreme Court’s “linkage” test, which requires that a reasonable buyer of Harley-Davidson motorcycle clothing would think of the Screaming Eagle stores’ trademark, the court said. The evidence confirmed that the mental association made by the stores’ customers was with the senior trademark, Harley-Davidson, not the Screamin’ Eagles trademark, he said.

“The Court finds that there is some goodwill attached to the defendants’ trademark, but that Harley-Davidson’s marks are better known and enjoy much greater brand recognition and fame” the court said.

7 Responses to “Judge Rules That Harley-Davidson Can Use “Screamin’ Eagle” Trademark On Clothing In Canada”

  1. 1 BobS Mar 13th, 2014 at 8:10 am

    So if you’re the little guy it doesn’t matter if you own it rightfully or not. A bigger, better known company can just use it with impunity because…well they’re beiiger and better known. Way to go Canada.

  2. 2 Sportster Mike Mar 13th, 2014 at 8:16 am

    A thought from over the pond (England)… but what do the real ‘Screaming Eagles’ think?
    101st Airborne I believe?…..

  3. 3 Terence Tory Mar 13th, 2014 at 8:27 am

    Well.Nike really only owns the name Nike for sports shoes and clothing.Trademarking is a funny old jungle full of legal eagles.Even some less than legal eagles flapping about as well.

  4. 4 Mr.Defo Mar 13th, 2014 at 8:51 am

    It seems like a fair enough compromise. Harley gets to use its brand in its stores, and the Canadian Screamin Eagle gets to continue to use its trademarked brand and logo.

  5. 5 Me Mar 13th, 2014 at 9:42 am

    HD trademarked Screamin’ Eagle in 1983. The clothing retailer started business with Screaming Eagle in 1999. Maybe I should start up a business selling Screaming Eagle clothes, too – I can cash in on HDs work like this guy did.

    (Sportster Mike, the US Government has laws which prevent copyright and trademark of government entities funded works and such)

  6. 6 Chris Mar 13th, 2014 at 9:48 am

    @BobS – Harley introduced the Screamin’ Eagle brand in 1983. Harley’s is the elder mark.

  7. 7 BCinSoCal Mar 18th, 2014 at 1:21 pm

    WHO WAS FIRST? Just to add to the confusion, in the 70s I had a chopper shop in Portland , Oregon. The state prison guards would take prisoners on a supervised outing and would bring their bike loving prisoners by my shop, they asked me to come and speak before their behind the walls motorcycle club…………..name ….Screaming Eagles!

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Cyril Huze