Despite 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.
Plaintiff 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.