Canadian Intellectual Property Office

THE REGISTRAR OF TRADEMARKS

Citation: 2023 TMOB 134

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: TMA640,988 for H-D

Introduction

[1] This is a decision involving a summary expungement proceeding with respect to registration No. TMA640,988 for the trademark H-D (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 motorcycles, various motorcycle parts, clothing and apparel, and smokers’ articles. The statement of goods is reproduced in its entirety in Schedule A to this decision.

[3] For the reasons that follow, I conclude that the registration ought to be amended.

Record

[4] On October 15, 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 goods 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.

[6] The relevant definition of “use” is set out in section 4(1) of the Act as follows:

A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.

[7] In this case, the relevant period for showing use is between October 15, 2018 and October 15, 2021.

[8] 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 May 12, 2022, together with Exhibits AB‑1 to AB‑12.

[9] Only the Owner filed written representations and was represented at an oral hearing.

[10] The hearing in this proceeding was held concurrently with hearings in summary expungement proceedings with respect to registration Nos. TMA524,013 and TMA455,834, both for the trademark HARLEY-DAVIDSON. Separate decisions will issue for those registrations.

Evidence

[11] Ms. Brown states that the Owner’s main activity is the manufacture and sale of motorcycles, but its activities also extend to “a range of products and services ancillary to motorcycling such as motorcycle parts, clothing, jewelry, toys, finance and insurance, touring and servicing” [para 9].

[12] The Owner markets its products and services in Canada under the Trademark either directly, or through licensees and distributors. During the relevant period, the Owner exercised direct or indirect control over the character or quality of the registered goods sold in association with the Trademark [paras 10 and 15].

[13] With respect to the Owner’s distribution chain, Ms. Brown states that goods are ordered either online or through catalogues, by direct customers and by “distributors/dealers”. When goods are ordered by distributors/dealers, they are subsequently sold to direct customers, such as through Harley-Davidson dealership stores [paras 11 and 12].

[14] Ms. Brown asserts that “at least one unit of each of the [registered goods] bearing the Trademark were sold in the normal course of trade, in Canada during the Relevant Period” [para 34].

[15] Ms. Brown’s affidavit is divided into sections, each corresponding to categories of goods, namely “motorcycles”, “motorcycle parts”, “clothing, headwear and footwear”, and “smokers’ articles”. I will now turn to each group of goods specified in the subject registration. My analysis will be guided by those four categories, in reverse order.

Reasons

Smokers’ articles

[16] The statement of goods covers smokers’ articles, and in particular the following registered goods:

(5) Smokers’ articles not of precious metal, namely, cigarette lighters, lighter cases, and snuff can holders

[17] At paragraph 31 of her affidavit, Ms. Brown lists each one of goods (5) and asserts that such goods bearing the Trademark were sold in Canada during the relevant period. In addition, she attests that sales of “cigarette lighters and lighter cases bearing the Trademark” during the relevant period were greater than $30,000 [para 33]. She provides no such sales figure for the registered goods “snuff can holders”.

[18] Ms. Brown attaches a copy of the 2021 and 2020 catalogues for the Owner’s licensee Zippo Manufacturing Company and attests that the catalogues were available and used by consumers in Canada to select and order “cigarette lighters and lighter cases” during the relevant period [para 32, Exhibit AB‑12].

[19] In the body of her affidavit, Ms. Brown reproduces an image, extracted from one of the exhibited catalogues, of a cigarette lighter bearing the Trademark [para 33]. As for the other goods (5), I note that one Exhibit AB‑12 catalogue page shows a leather “H‑D® Lighter Pouch”. There is no reference to “snuff can holders” in the catalogues.

[20] Having regard to the above, I am satisfied that the Owner has shown use of the Trademark within the meaning of sections 4 and 45 of the Act in association with “cigarette lighters” and “lighter cases”, but not “snuff can holders”.

Clothing, headwear and footwear

[21] The statement of goods covers clothing, headwear and footwear, and in particular the following registered goods:

(4) Shirts, jackets, vests, lingerie, belts, T-shirts, sweaters, pants, neckties, coveralls, rain coats, rain hats, nightgowns, halters, underwear, tank tops, sweat pants, sweatshirts, nightshirts, socks, gloves, hats, suspenders, chaps, wristbands, heel spurs, heel guards, sole plates, boot tips, shorts, scarves, jeans, leather jackets, leather pants, leather vests, leather chaps, leather belts, leather boots, leather caps, leather hats, leather gloves, leather mittens, leather halter tops, and leather skirts

[22] At paragraph 24 of her affidavit, Ms. Brown lists each one of goods (4) and asserts that such goods bearing the Trademark were sold in Canada during the relevant period.

[23] In support, Ms. Brown attaches the following exhibits to her affidavit:

• the Owner’s August 2021 “General Merchandise Catalog” which she explains features clothing, headwear and footwear available for sale in Canada [para 25, Exhibit AB‑6];
• catalogues from the Owner’s licensee 5H Accessories for men’s and women’s collections in Fall/Winter 2020 and Spring 2019 [para 26, Exhibits AB-7 and AB‑8, respectively];
• printouts of webpages from the online stores of the Owner’s licensees in Canada, namely the Pfaff Harley-Davidson and Clare’s Harley-Davidson dealerships [paras 27 and 28, and Exhibits AB-9 and AB‑10, respectively].

[24] Ms. Brown attests that the exhibited catalogues and online stores were available and used by consumers in Canada to select and order clothing, headwear and footwear during the relevant period [paras 25 to 28].

[25] As representative examples showing the display of the Trademark, Ms. Brown reproduces images extracted from the exhibited catalogues and online store webpage printouts in the body of her affidavit. The images depict the following products:

• “H-D® Brawler Mixed Media Jacket”, “H-D® Brawler Leather Jacket”, “Deluxe II Leather Chap”, “H-D® Racing Shirt”, “H-D® Brawler Full Finger Glove”, and “Triangle H-D® 9FIFTY® Cap” [para 25]. While the resolution of the images is low for most products, I note that the Trademark is displayed on the cap.

· “Dazzler Belt”, and “Salvage [Wrist] Cuff” [para 26]. The Trademark is displayed on both products.

• a leather lace-up boot bearing the Trademark [para 27]; and
• a tank top bearing the Trademark [para 28].

[26] In addition, Ms. Brown attests that sales of “clothing, headwear and footwear… bearing the Trademark” were greater than $5 million for “apparel”, $130,000 for “headwear”, and $4 million for “footwear” [para 30].

[27] Although Ms. Brown does not specify that those figures correspond to sales during the relevant period, she provides representative invoices dated during the relevant period, and issued by the Owner to Harley-Davidson dealerships located in Canada [Exhibit AB‑11]. She describes the invoices as “representative only and certainly not exhaustive of all the sales of the clothing, headwear and footwear constituting the [registered goods] made in Canada during the Relevant Period in association with the Trademark” [para 29].

[28] In view of the above, and in the absence of submissions from the Requesting Party, I am satisfied that the Owner has shown use of the Trademark within the meaning of sections 4 and 45 of the Act in association with each of goods (4).

Motorcycle parts

[29] The statement of goods covers multiple groups of motorcycle parts, namely:

(1) Motorcycle parts, made of metal-namely, dowel pins, cotter pins, clamps, nuts, bolts, screws, brackets, studs, spacers, washers, studs, lock washers, retainers, springs, mounting plates, and bushings, safes

(6) Motorcycle electrical parts-namely, spark plugs: ignition wires, breaker points, and ignition switches, carburetors

(7) Motorcycle speedometers, thermometers, thermostats, motorcycle electrical parts - namely, electrical wire terminals, battery and grounding cables, lenses, magnets, armatures, circuit breakers, switches, turn signals and indicators, connectors, voltage regulators, ignition system pin plugs, socket terminal pins, single socket pins, ignition system clamps, and grounding straps, and motorcycle parts, namely, reflectors and stop light switches thereto, solenoid switches, jukeboxes

(3) Motorcycle parts - namely starter motor brushes, and tappets, rods, rocker arms, push rod covers, coil covers, valve spring retainers and collars, crank pin rollers, lock rings, bearings, flywheel crank pins, gear shaft lock plates, bearing rollers and bearing retainers, crank case plugs, oil plugs, oil pump plugs, engineer bearing shims, cams, cam followers, brake control levers, brake calipers, starter pins and roll pins, crank pins, shift lever pivot pin plugs, engine instrument plugs, axle caps, oil filler caps, gas filler caps, transmission gears, pumps, wheel weights, shift levers, chain housings, pawls for gear shifters, clutch hubs, clutch drive plates, adjusting nuts, wheel bearings, starter gear shift levers, transmission shift levers, shifter levers, choke levers, chain links, brake discs, brake pads, brake calipers, brake master cylinders, hydraulic fluid line connectors, brake pedals, axle caps, foot rests, stands, handle bar grips, clutch cables, throttle cables, mirrors, oil and air filters, seat grab straps, mud flaps, highway pegs, air cleaners, body trim, seats, derby and timer covers

[30] At paragraph 18 of her affidavit, Ms. Brown asserts that during the relevant period, “motorcycle parts (as set out in the Trademark registration) bearing the Trademark were sold” by the Owner or through its licensees in Canada.

[31] Ms. Brown attaches the Owner’s 2020 “Big Book” which she describes as featuring “parts and accessories displaying the Trademark on the motorcycle parts, and/or the packaging for said motorcycle parts” [para 19, Exhibit AB‑3]. I note here that the Owner confirmed at the hearing that the Big Books do not depict product packaging. Ms. Brown also attaches the 2019 edition of the Big Book [para 20, Exhibit AB‑4]. According to Ms. Brown, the exhibited Big Books were available and used by consumers in Canada to select and order motorcycle parts during the relevant period [para 19].

[32] As examples of the display of the Trademark on the goods themselves, Ms. Brown reproduces images extracted from the 2020 Big Book in the body of her affidavit. The images depict the motorcycle parts identified as follows: “hand and foot controls”, “front axle nut covers”, “H-D detachables latch kit”, “H-D® classic fender tip”, “footpegs”, “hand grips”, “H-D® original equipment brake pads”, and “H-D® Prodigy® custom wheels” [para 20]. I note that the hand control, nut covers, fender tip, footpegs, and hand grip bear the Trademark.

[33] Regarding evidence of transfers, Ms. Brown provides sales figures for “retail sales of motorcycle parts (as noted above in [her] affidavit)”. The sales figures are broken down by categories, identified by Ms. Brown as:

• Audio & Instrumentation
• Backrest & Racks
• Bags, Luggage & Travel
• Bearings, Seals and Hardware
• Braking and Suspension
• Buell Parts/Miscellaneous
• Chassis & Components
• Decorative & Trim
• Electrical
• Engine, Transmission & Primary
• Foot Controls
• Hand Controls & Mirrors
• Handlebars, Cables & Lines
• Intake, Exhaust & Fuel Management
• Lighting
• Maintenance & Tools
• Oil & Fluids
• Paint & Body Work
• Seats, Backrests & Luggage Racks
• Security & Storage
• Tires
• Wheels, Sprockets & Rotors
• Windshields & Air Deflectors

[34] The sales figures cover the periods of October 15 to December 31, 2018; January 1 to December 31, 2019; January 1 to December 31, 2020; and January 1 to October 15, 2021.

[35] The evidenced total sales over three years for each category range from more than $20 million for categories such as Maintenance & Tools, Oils & Fluids, and Tires, to just over $25,000 for Backrests & Racks [para 23]. In contrast to other sales figures provided by Ms. Brown, there is no specific indication that the figures for motorcycle parts are specifically related to sales of goods bearing the Trademark.

[36] In terms of direct evidence of transfers, Ms. Brown provides representative invoices for “motorcycle parts constituting the [registered goods]” dated during the relevant period and issued by the Owner to Harley-Davidson dealerships located in Canada [para 22, Exhibit AB-5]. Exhibit AB-5 also includes documents which appear to be internal records consisting of sales orders for motorcycle parts.

[37] As she did for goods (4), Ms. Brown describes the invoices as “representative only” of the sales of motorcycle parts “in association with the Trademark” [para 22]. The Owner has provided no correlation between invoiced products and registered goods, nor are such correlations obvious on the basis of the invoiced product descriptions. The Trademark does not appear to be displayed in association with any products referenced in the Exhibit AB-5 documents.

[38] Having regard to the evidence as a whole, I am not satisfied that the Owner has shown use of the Trademark in association with each of the motorcycle parts listed in the subject registration [see Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448].

[39] It is trite law that the evidentiary threshold that the registered owner must meet in a section 45 proceeding is quite low and that the owner must simply establish a prima facie case of use of its trademark within the meaning of section 4 of the Act. Nevertheless, sufficient facts must still be provided to allow the Registrar to conclude that the trademark was used in association with each of the registered goods [Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184].

[40] I first note that the Owner does not assert that the sales figures for motorcycle parts relate specifically to goods bearing the Trademark. Second, I find that Ms. Brown’s broad assertion of sales at paragraph 34 of her affidavit, essentially reproducing the language of section 4(1) of the Act, is tantamount to an assertion of use; that statement is therefore of little assistance to the Owner.

[41] I am nevertheless prepared to accept the images reproduced at paragraph 20 of Ms. Brown’s affidavit as representative evidence for some of the motorcycle parts, namely those parts listed at goods (3). In particular, I consider that the depicted foot controls, fender tip, foot pegs, hand grips, and brake pads, correspond to the following goods (3): “brake pedals”, “body trim”, “foot rests”, “handle bar grips”, and “brake pads”, respectively.

[42] Otherwise, while I accept that the Owner has sold various motorcycle parts, in the absence of additional evidence specifically relating to parts bearing the Trademark, I am unable to form an opinion on the use of the Trademark in association with the motorcycle parts listed at goods (1), (6), and (7).

[43] In sum, in view of the representative evidence for goods (3), I am only satisfied that the Owner has shown use of the Trademark within the meaning of sections 4 and 45 of the Act in association with those motorcycle parts. In my view, the Owner has not met its evidentiary burden to show use within the meaning of the Act in respect of goods (1), (6), and (7).

Motorcycles

[44] The remaining registered goods specified in the registration are goods (2), namely “Motorcycles”.

[45] Ms. Brown states that during the relevant period, motorcycles were sold and shipped to distributors/dealers and direct consumers in Canada in crates. In the body of her affidavit, she reproduces photographs depicting such shipping crates; the Trademark is displayed on the bottom corner of those crates [paras 13 to 14].

[46] Ms. Brown provides the number of “motorcycles sold in Canada bearing the Trademark” for the periods ranging from October 15 to December 31, 2018; January 1 to December 31, 2019; January 1 to December 31, 2020; and January 1 to October 15, 2021. In total, almost 25,000 motorcycles were sold over the course of those three years [para 15].

[47] In terms of direct evidence of transfers, Ms. Brown provides representative invoices issued by the Owner to Harley-Davidson Canada LP, Barnes Harley-Davidson and Barnes Harley-Davidson Victoria, all three located in Canada. The invoices evidence the sale of motorcycles during the relevant period [para 16, Exhibit AB-1].

[48] In view of the above, I am satisfied that the Owner has shown use of the Trademark within the meaning of sections 4 and 45 of the Act in association with goods (2), namely “Motorcycles”.

Disposition

[49] In the absence of special circumstances excusing non-use, and 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 amended to delete the following goods from the registration:

(1) Motorcycle parts, made of metal-namely, dowel pins, cotter pins, clamps, nuts, bolts, screws, brackets, studs, spacers, washers, studs, lock washers, retainers, springs, mounting plates, and bushings, safes

(6) Motorcycle electrical parts-namely, spark plugs: ignition wires, breaker points, and ignition switches, carburetors

(7) Motorcycle speedometers, thermometers, thermostats, motorcycle electrical parts - namely, electrical wire terminals, battery and grounding cables, lenses, magnets, armatures, circuit breakers, switches, turn signals and indicators, connectors, voltage regulators, ignition system pin plugs, socket terminal pins, single socket pins, ignition system clamps, and grounding straps, and motorcycle parts, namely, reflectors and stop light switches thereto, solenoid switches, jukeboxes

(5) [Smokers’ articles not of precious metal, namely,] … and snuff can holders

[50] The statement of goods will now read as follows:

(2) Motorcycles

(3) Motorcycle parts - namely starter motor brushes, and tappets, rods, rocker arms, push rod covers, coil covers, valve spring retainers and collars, crank pin rollers, lock rings, bearings, flywheel crank pins, gear shaft lock plates, bearing rollers and bearing retainers, crank case plugs, oil plugs, oil pump plugs, engineer bearing shims, cams, cam followers, brake control levers, brake calipers, starter pins and roll pins, crank pins, shift lever pivot pin plugs, engine instrument plugs, axle caps, oil filler caps, gas filler caps, transmission gears, pumps, wheel weights, shift levers, chain housings, pawls for gear shifters, clutch hubs, clutch drive plates, adjusting nuts, wheel bearings, starter gear shift levers, transmission shift levers, shifter levers, choke levers, chain links, brake discs, brake pads, brake calipers, brake master cylinders, hydraulic fluid line connectors, brake pedals, axle caps, foot rests, stands, handle bar grips, clutch cables, throttle cables, mirrors, oil and air filters, seat grab straps, mud flaps, highway pegs, air cleaners, body trim, seats, derby and timer covers

(4) Shirts, jackets, vests, lingerie, belts, T-shirts, sweaters, pants, neckties, coveralls, rain coats, rain hats, nightgowns, halters, underwear, tank tops, sweat pants, sweatshirts, nightshirts, socks, gloves, hats, suspenders, chaps, wristbands, heel spurs, heel guards, sole plates, boot tips, shorts, scarves, jeans, leather jackets, leather pants, leather vests, leather chaps, leather belts, leather boots, leather caps, leather hats, leather gloves, leather mittens, leather halter tops, and leather skirts

(5) Smokers’ articles not of precious metal, namely, cigarette lighters, lighter cases

 

 

_______________________________

Eve Heafey

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

SCHEDULE A

goods

(1) Motorcycle parts, made of metal-namely, dowel pins, cotter pins, clamps, nuts, bolts, screws, brackets, studs, spacers, washers, studs, lock washers, retainers, springs, mounting plates, and bushings, safes

(6) Motorcycle electrical parts-namely, spark plugs: ignition wires, breaker points, and ignition switches, carburetors

(7) Motorcycle speedometers, thermometers, thermostats, motorcycle electrical parts - namely, electrical wire terminals, battery and grounding cables, lenses, magnets, armatures, circuit breakers, switches, turn signals and indicators, connectors, voltage regulators, ignition system pin plugs, socket terminal pins, single socket pins, ignition system clamps, and grounding straps, and motorcycle parts, namely, reflectors and stop light switches thereto, solenoid switches, jukeboxes

(2) Motorcycles

(3) Motorcycle parts - namely starter motor brushes, and tappets, rods, rocker arms, push rod covers, coil covers, valve spring retainers and collars, crank pin rollers, lock rings, bearings, flywheel crank pins, gear shaft lock plates, bearing rollers and bearing retainers, crank case plugs, oil plugs, oil pump plugs, engineer bearing shims, cams, cam followers, brake control levers, brake calipers, starter pins and roll pins, crank pins, shift lever pivot pin plugs, engine instrument plugs, axle caps, oil filler caps, gas filler caps, transmission gears, pumps, wheel weights, shift levers, chain housings, pawls for gear shifters, clutch hubs, clutch drive plates, adjusting nuts, wheel bearings, starter gear shift levers, transmission shift levers, shifter levers, choke levers, chain links, brake discs, brake pads, brake calipers, brake master cylinders, hydraulic fluid line connectors, brake pedals, axle caps, foot rests, stands, handle bar grips, clutch cables, throttle cables, mirrors, oil and air filters, seat grab straps, mud flaps, highway pegs, air cleaners, body trim, seats, derby and timer covers

(4) Shirts, jackets, vests, lingerie, belts, T-shirts, sweaters, pants, neckties, coveralls, rain coats, rain hats, nightgowns, halters, underwear, tank tops, sweat pants, sweatshirts, nightshirts, socks, gloves, hats, suspenders, chaps, wristbands, heel spurs, heel guards, sole plates, boot tips, shorts, scarves, jeans, leather jackets, leather pants, leather vests, leather chaps, leather belts, leather boots, leather caps, leather hats, leather gloves, leather mittens, leather halter tops, and leather skirts

(5) Smokers’ articles not of precious metal, namely, cigarette lighters, lighter cases, and snuff can holders

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