Federal Court Decisions

                                 T-2030-92

IN THE MATTER OF Sections 56 and 59 of the Trade-Marks Act R.S.C. 1985, Chapter T-13

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IN THE MATTER OF an Opposition by HEAVY DUTY CYCLES LTD. to Application No. 536,369 for the registration of the Trade Mark "H-D" filed by HARLEY-DAVIDSON INC.

BETWEEN:

HEAVY DUTY CYCLES LTD.

                                 Appellant

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HARLEY-DAVIDSON INC.

                                 Respondent

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THE REGISTRAR OF TRADE-MARKS

                                 Respondent

REASONS FOR JUDGMENT

GIBSON J.:

     On February 8, 1985, the Respondent HARLEY-DAVIDSON INC. filed an application to register the Trade-Mark H-D for a variety of wares, namely:

1)      motorcycles, air filter elements, motorcycle helmets, motorcycle chains, air cleaner elements, and motorcycle parts based on use in Canada from dates ranging from December 31, 1972 to March 31, 1982; and

2)      motorcycles, motorcycle chains, and a long list of motorcycle parts, based on use and three Trade-mark registrations in the United States of America.

     In these reasons, references to the "Respondent" are to the respondent HARLEY-DAVIDSON INC. The respondent the Registrar of Trade-marks filed no materials on this appeal and otherwise took no active part.

     The application to register the Trade-mark H-D was advertised for opposition purposes on April 2, 1986. On May 2 of that year, the Appellant filed a Statement of Opposition. The only ground of opposition pleaded was that the mark H-D is not distinctive of the Respondent's wares.

     The term "distinctive" is defined in section 2 of the Trade-marks Act¹ as follows:

"distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;

     The Appellant based its claim that the mark H-D is not distinctive of the wares and services of the Respondent on the ground that the Appellant had, since April of 1983, used its trade-mark "H-D & Design", shown below,² for motorcycles, motorcycle parts and the operation of a motorcycle parts wholesale distribution and retail store and had used the letters "HD" in bold, enlarged form in association with its corporate name Heavy Duty Cycles Limited since a date prior to 1983. That use had been in the form of the logo, also shown below.³

     By decision dated June 30, 1992, Myer Herzig, a member of the Trade-marks Opposition Board, rejected the Appellant's opposition. These reasons arise out of an appeal, pursuant to Section 56 of the Trade-marks Act, of that decision.

     After summarizing the evidence filed in the opposition proceedings, and asserting that the material date for considering the circumstances respecting the issue of distinctiveness is the date of filing of the opposition, the learned member of the Trade-marks Opposition Board concluded as follows:

The opponent has fulfilled its evidential burden in so far as showing use of its mark and logo in association with services as alleged in the statement of opposition. The opponent's case is that the applied for mark H-D cannot distinguish the applicant's wares because the opponent's activities under its logo, mark, and trade name have caused the letters HD to be associated with the opponent's business to such an extent that those letters do not distinguished the applicant's wares. I do not accept the opponent's submissions.

It is one thing for the opponent to claim that its mark and logo distinguish its services; it is quite another thing to say that the design element HD now appearing in the opponent's mark and previously appearing in the opponent's logo, in different forms, has rendered the applied for mark H-D non-distinctive. The evidence adduced by the applicant establishes a significant reputation for the mark H-D in Canada at the material date. The opponent has never used the letters HD per se as a mark or logo or as an element of a mark or logo. I find that the opponent's evidence of its activities under its mark and logo is far from sufficient to justify reaching the conclusion that the applied for mark H-D does not distinguish the applicant's wares from the services offered by the opponent.

     I am satisfied that the decision under appeal is fully consistent with the evidence filed in the opposition proceedings.

     On this appeal, new evidence was filed, as authorized by subsection 56(5) of the Trade-marks Act, on behalf of both the Appellant and the Respondent. Subsection 56(5) reads as follows:

(5)      On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.

     The Appellant's new evidence consisted of two affidavits of Donald Petersen, the president of the Appellant, one of a motorcycle journalist based in California, and three of individuals employed in motorcycle sales and service in Ontario. Mr. Petersen's affidavits attest to the gross sales figures for the Appellant for the years 1980 to 1991 but provide no breakdown of those figures between service revenues and parts and accessories sales. Mr. Petersen further attests to the Appellant's advertising expenditures and the publicity associated with its participation in motorcycle shows and educational activities as well as publicity gained through publication of technical articles. Little detail is provided with respect to these activities. He further attests to the sale of "ten of thousands" of articles of clothing related to motorcycling that apparently bearing the Appellant's logo, prominently incorporating the letters "HD". He also produced a copy of a check in payment for purchase of motorcycle parts made out to the order of "Donny Petersen's H.D. Cycle".

     The affidavit of the California based motorcycle journalist attests to her knowledge of the Plaintiff. Her affidavit provides:

I understand the letters "H.D." to refer to either Harley-Davidson or Heavy Duty Cycles.

The affidavits of those employed in the industry provide conflicting evidence as to the use of the mark "HD" or "H-D" but are consistent as to the association of the mark "HD Cycles" with the Appellant.

     The Respondent's new evidence consisted of an affidavit of William Wood Jr., manager, trade-mark enforcement, for the Respondent, three affidavits of persons employed in motorcycle sales and service in Ontario and one affidavit of a motorcycle enthusiast.

     The Wood affidavit provides examples of use and recent expanded use of the mark H-D in association with the Respondent's wares in Canada, provides Respondent's sales figures for motorcycles and motorcycle parts in Canada for the years 1982 to 1990 with a notation that figures for 1991 and 1992 are in the same range as the 1990 figures, and provides reasonably extensive information regarding the nature of the Respondent's advertising activities in Canada.

     The three affidavits of persons employed in the motorcycle business in Ontario attest to the association of the mark H-D in that business in Canada with the Respondent only. The motorcycle enthusiast attests that he associates the mark H-D "...only with Harley-Davidson Inc."

     I am satisfied that the standard of review on an appeal such as this is well established in law. In Mitac Inc. v. Mita Industrial Co.,⁴ Mr. Justice Denault wrote at pages 391 and 392:

Before examining these factors, I must point out that, in cases such as these, the onus on the appellant is twofold. First, the appellant must establish that the hearing officer erred in his appreciation of the facts or in his interpretation of the law. It is well-established that such a decision carries considerable weight and is not to be lightly set aside. [citations omitted].

Additional authority for the foregoing proposition can be found in Hugo Boss A.G. v. Paragon Clothing Ltd.⁵ and the authorities cited therein. Further, in the Hugo Boss decision, Mr. Justice Pinard, on an appeal from a decision of the Registrar of Trade-marks maintaining the opposition to a trade mark registration, stated at page 510:

Every court of review was also reminded by the Supreme Court of Canada in Boulis v. Canada (Minister of Manpower & Immigration)...[1974] S.C.R. 875, that decisions by administrative boards should not be analyzed or parsed microscopically as if one were dealing with a matter of statute interpretation.

Finally, on issues related to the nature of an appeal such as this, Mr. Justice Pinard, citing Panavision, Inc. v. Matsushita Electric Industrial Co.⁶ wrote at page 511:

For the purposes of this appeal, the appellant has submitted further evidence which was not before the Registrar. However, in order to justify the intervention of this court and a departure from the Registrar's conclusions, the new evidence must be sufficiently material:...

     The authorities on the material date for determining distinctiveness are not unanimous. In Hughes on Trade-Marks⁷, the learned author wrote at page 458:

The relevant date for determining the question of distinctiveness is probably the date of filing the opposition, though this has been doubted, a suggestion being made that the relevant date is the date of disposition of the opposition.

Although the date of filing of the opposition in this matter, May 2, 1986 and the date of disposition of the opposition, June 30, 1992, are some six years apart, I am satisfied on the evidence that was before the Trade-marks Opposition Board member and the further evidence that is before this Court that nothing turns on whichever of those dates is chosen.

     Turning then to the question of whether or not the evidence submitted on behalf of the appellant before the Trade-marks Opposition Board and this Court is sufficient to justify the granting of this appeal, I find the following quotation from the reasons of Mr. Justice Addy in Motel 6, Inc. v. No. 6 Motel Ltd. et al.⁸ at page 58 to be instructive:

It is sufficient to establish that the other mark [in this case the appellant's mark] has become known sufficiently to negate the distinctiveness of the mark under attack.

As to "distinctiveness", Mr. Justice Strayer, as he then was, wrote in Royal Doulton Tableware Ltd. et al. v. Cassidy's Ltd.⁹ at page 371:

In interpreting the definition of "distinctive" ... Jackett C.J. said at page 368 [in Sportcam Co v. Breck's Sporting Goods Co., [1973] F.C. 360]...; "the question is one of fact as to what message the trade mark 'actually' conveys to the public".

Later on the same page, Mr. Justice Strayer wrote:

In the final analysis the critical factor according to these cases is the message given to the public.

     On the totality of the evidence before the Trade-marks Opposition Board and this Court in this matter, usage of the Appellant is of the "Heavy Duty Cycles & Design" and of the stylized version of its name displayed earlier in footnotes to these reasons. The evidence fails to disclose that the Appellant has used or been known by the mark "HD" or "H-D". In fact, the evidence indicates that the only use by the Appellant of the term "HD" per se has been in reference to the Respondent and not to the Appellant itself. In the result, I conclude that the Appellant has simply failed to establish that "HD" or "H-D" has become known sufficiently in relation to the wares and services of the Appellant to negate the distinctiveness of the mark under attack, albeit that the distinctiveness of the mark under attack is somewhat limited by virtue of its consisting only of two letters of the alphabet conjoined by a hyphen.

     In the result, the appeal will be dismissed.

     Federal Court Rule 1312 in the division of the Rules dealing with "Statutory appeals" such as this, provides that no costs shall be payable by any party to an appeal under the division, unless the Court, in its discretion, for special reasons, so orders. Neither counsel identified what I would consider to be special reasons. In the result, there will be no order as to costs.

                 _____________________________

                     Judge

Ottawa, Ontario

March 17, 1997

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¹

R.S.C. 1985, c. T-13

²

³

⁴

(1992), 40 C.P.R. (3d) 387 (F.C.T.D.)

⁵

(1994), 58 C.P.R. (3d) 504 (F.C.T.D.)

⁶

(1992), 40 C.P.R. (3d) 486 (F.C.T.D.)

⁷

R.T. Hughes, Hughes on Trade Marks (Markham: Butterworths, 1996) (looseleaf)

⁸

(1981), 56 C.P.R. (2d) 44, (F.C.T.D.)

⁹

[1986] 1 F.C. 357 (F.C.T.D.)