Canadian Intellectual Property Office
Citation: 2023 TMOB 135
Date of Decision: 2023-07-31
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Montréal Production Inc.
Registered Owner: Harley-Davidson Motor Company, Inc.
Registration: TMA455,834 for HARLEY-DAVIDSON
Introduction
[1] This is a decision involving a summary expungement proceeding with respect to registration No. TMA455,834 for the trademark HARLEY-DAVIDSON (the Trademark) currently standing in the name of Harley-Davidson Motor Company, Inc. (the Owner).
[2] The Trademark is registered for use in association with “Restaurant and bar services”.
[3] For the reasons that follow, I conclude that the registration ought to be maintained.
Record
[4] On May 17, 2021, at the request of Montréal Production Inc. (the Requesting Party), the Registrar of Trademarks issued a notice pursuant to section 45 of the Trademarks Act, RSC 1985, c T‑13 (the Act) to H-D U.S.A., LLC, the previous owner of the subject registration. On May 5, 2023, the Registrar recorded a change in title from this entity to the Owner, due to a merger effective December 31, 2022. I am satisfied that this change in title is not at issue in this proceeding and, for simplicity, will refer to both the Owner and its predecessor-in-title as “the Owner”.
[5] The notice required the Owner to show whether the Trademark was used in Canada in association with each of the services specified in the registration at any time within the three-year period immediately preceding the date of the notice and, if not, the date when the Trademark was last in use and the reason for the absence of such use since that date. In this case, the relevant period for showing use is between May 17, 2018 and May 17, 2021.
[6] In response to the Registrar’s notice, the Owner submitted the affidavit of Adraea M. Brown, Vice President and Assistant General Counsel for the Owner, sworn on March 16, 2022, together with Exhibits 1 to 3. As set out in greater detail below, the Owner relies on the affidavit of Ms. Brown to demonstrate use of the Trademark by its licensee, Clare’s Harley-Davidson (the Licensee).
[7] Only the Owner filed written representations and was represented at an oral hearing.
[8] The hearing in this proceeding was held concurrently with hearings in summary expungement proceedings with respect to registration Nos. TMA524,013 for the trademark HARLEY-DAVIDSON and TMA640,988 for the trademark H-D. Separate decisions will issue for those registrations.
Preliminary Remark
[9] As a preliminary matter, I note that some of the exhibits attached to the Brown affidavit display the design mark reproduced below (the “Cycles Logo”):
[10] I find that the Trademark, displayed prominently at the center of the design, stands out from the additional material such that the public as a matter of first impression would perceive the Trademark per se as being used [Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB)].
[11] As a result, I consider that the display of the Cycles Logo constitutes display of the Trademark.
Evidence
[12] Ms. Brown states that the Licensee operates a motorcycle dealership in Niagara-on-the-Lake, Ontario. Within the same premises, it also operates a restaurant and coffee bar (also sometimes referred to by Ms. Brown as a “café”, a term which I make mine in this decision).
[13] Ms. Brown provides webpage print outs of the Licensee’s website located at www.claresharleydavidson.com [Exhibit 1]. One webpage describes the history of the “Clare’s Harley-Davidson®” dealership as well as the opening of the café at the dealership.
[14] Ms. Brown provides photographs showing the Trademark displayed at the café, including on the outside of the building, on tables within the café and on a wall behind a counter [Exhibit 2]. She confirms that the photographs accurately represent how the Trademark appeared and was displayed at the café throughout the relevant period.
[15] According to Ms. Brown, with the exception of the closures related to the COVID‑19 pandemic beginning in March 2020, “the restaurant and coffee bar is open every business day and is quite busy”. In particular, during the relevant period, there were “many purchasing customers who would eat and drink on site or order take away from the bar every business day the café was open” [para 15].
[16] In addition to performing restaurant and bar services, the Licensee also advertised its services through its social media accounts. Ms. Brown provides a printout of an Instagram post published on July 28, 2018 [Exhibit 3]. Ms. Brown confirms that the exhibited social media post is representative of how the Trademark was displayed in the promotion of restaurant and bar services by the Licensee during the relevant period.
[17] I note that, aside from the account name “CLARE’S Harley-Davidson of Niagara” and the account handle “claresharleydavidson”, the Trademark is not clearly visible in the exhibited post. However, a coffee mug depicted in the posted photograph appears to bear the Cycles Logo.
[18] Finally, with respect to control, Ms. Brown attests that, during the relevant period, the Owner exercised direct or indirect control over the character and quality of the “restaurant and coffee bar services” promoted and performed by its Licensee.
Reasons
[19] The relevant definition of “use” is set out in section 4(2) of the Act as follows:
A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
[20] It is well established that the purpose and scope of section 45 of the Act is to provide a simple, summary, and expeditious procedure for removing “deadwood” from the register. The evidence in a section 45 proceeding need not be perfect; indeed, a registered owner need only establish a prima facie case of use within the meaning of sections 4 and 45 of the Act. This burden of proof is light; evidence must only supply facts from which a conclusion of use may follow as a logical inference [per Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184 at para 9].
[21] Considering the evidence as a whole, I find that the Owner has discharged its light burden in this case. Indeed, at a minimum, the evidence demonstrates that the Licensee operated a café during the relevant period and that the Trademark was displayed inside and outside the café at the time. Furthermore, per Ms. Brown’s sworn statements, I accept that at least some “purchasing customers” were served at the café during this period.
[22] I am therefore satisfied that the Owner has shown use of the Mark within the meaning of sections 4 and 45 of the Act in association with the registered services.
Disposition
[23] Pursuant to the authority delegated to me under section 63(3) of the Act, and in compliance with the provisions of section 45 of the Act, the registration will be maintained.
_______________________________
Eve Heafey
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: 2023-06-06
APPEARANCES
For the Requesting Party: No one appearing
For the Registered Owner: Charlotte MacDonald
AGENTS OF RECORD
For the Requesting Party: No agent appointed
For the Registered Owner: Gowling WLG (Canada) LLP