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Page 4 March 24, 2014 • Law TiMes www.lawtimesnews.com recent Federal Court decision in- volving the iconic Harley-David- son motorcycle brand provides the fi rst detailed consideration of s. 22 of the Trademarks Act since the Supreme Court of Canada's analysis of the provision in 2006. e section prohibits the use of a trade- mark registered by another person in a way that depreciates the value of the goodwill attached to it. Unlike the more commonly cited s. 20, s. 22 contemplates depreciation of goodwill in the absence of any proof of confusion among prospective consumers. Graham Hood of Smart & Biggar/ Fetherstonhaugh, the fi rm that represented Harley-Davidson Motor Co., says Justice André Scott's reasons in H-D U.S.A. LLC v. Berrada will be of considerable assistance to brand owners who are either alleging or de- fending allegations of loss of goodwill. " is is the fi rst case since the Supreme Court decisions in which a judge has so carefully considered the question of what evidence is necessary to establish that a trademark is so well known as to have sig- nifi cant goodwill attached to it," he says. e Supreme Court cases, Veuve Clic- quot Ponsardin v. Boutique Cliquot Ltée. and Mattel Inc. v. 3894207 Canada Inc., were nothing less than attempts by two owners of very famous trademarks to es- tablish what amounted to a "super trade- mark." e marks in question were those of a famous French champagne, Veuve Clicquot, and the ubiquitous Barbie doll. In each case, the owners of the trademarks argued that the reputation associated with their marks allowed them to prevent others in unrelated industries from using the same or similar marks. e Supreme Court rejected their sub- missions, holding that there was no likeli- hood of confusion in either case. As the top court saw it, the famous brand owners also hadn't discharged their burden under s. 22, having failed to show that the defen- dants had made such use of suffi ciently similar marks so as "to evoke in a relevant universe of consumers a mental association of the two marks that is likely to depre- ciate the value of the goodwill" attaching to the famous brand own- ers' marks. H-D, however, had a diff erent twist to it. "What is somewhat unique here is that it was the lesser-known brand, Berrada, that made the allegations of depreciation," says Kristin Wall of Norton Rose Fulbright Canada LLP's Toronto offi ce. e case originated with Harley-Da- vidson's claim for declarations regarding its right in relation to the "screaming eagle" trademark. Berrada, a clothing retailer, counterclaimed. It alleged Harley-Davidson had been selling clothing with screaming eagle trademarks in an bid to diminish the goodwill of the screaming eagle and screa- min' eagle trademarks that Berrada had been using for more than two decades. Harley-Davidson owned the Canadian screamin' eagle trademark in relation to motorcycles as well as in relation to clothing in the United States but not in Canada. e evidence established, however, that Canadians had purchased Harley-Davidson's screamin' eagle clothing. Berrada owned a registered screaming eagle trademark for its stores. Although it had registered both marks in relation to clothing, it had allowed the marks to lapse but continued to use them in association with clothing sales. Scott found Berrada hadn't met the four elements of the Supreme Court's test for success under s. 22: Harley-Davidson had been using its own trademark and not Berrada's; while Berrada's trademarks had some goodwill attached to them, Harley-Davidson's marks were much better known and had greater brand rec- ognition and fame with motorcyclists; a reasonable buyer of Harley-Davidson motorcycle clothing wouldn't think of the defendant's mark; and Berrada hadn't proven lost sales or other damage to its goodwill. Scott also noted Berrada had made sev- eral attempts to associate itself with Harley- Davidson. e company unsuccessfully applied to become a Harley-Davidson licensee in 1988-89. Several years later, Berrada at- tempted to register screaming eagle in re- lation to motorcycles. In support, Berrada argued there was no likelihood of confusion, but the company sub- sequently abandoned its application. Berrada had also sold Harley-David- son merchandise in its stores and displayed its mark on its store bags in a co-operative advertising eff ort with licensed suppliers of Harley-Davi dson boots. As Scott saw it, Berrada couldn't have it both ways. " e judge realized that Berrada couldn't both trade off the Harley name and then accuse Harley of depreciating their goodwill," says Hood. Despite Harley-Davidson's success in this instance, Wall, who observes that both Veuve Clicquot and Mattel had lost at the Supreme Court, cautions that famous brands can't simply rely on their notoriety as the element that will neces- sarily prevail in these types of cases. "It's great to be a famous brand but it's even better to shore up your case with a registered mark and use," she says. LT he Ontario Superior is drawing a strict bound- ary on when police can enter people's houses without a search warrant, two recent cases show. e court overturned two convictions in the last few weeks in cases involving men found guilty of assaulting police offi cers who tried to enter their homes without a warrant. Toronto criminal lawyer Daniel Brown says both cas- es affi rm that police don't have the authority to enter or remain in someone's residence without the permission of the homeowner barring "very few exceptions specifi cally authorized by statute or the common law." ose excep- tions didn't apply in either case, he notes. " ese two appellate decisions are important because they affi rm police do not have unfettered access to a citi- zen's private property even when they are investigating criminality," says Brown, adding the decisions endorse the right of citizens to use reasonable force to expel tres- passers from their property. In R. v. Zargar, the court had convicted a Toronto man of assault a er he pushed a police offi cer out of his downtown condo. At the time, police were responding to a noise disturbance call as the building's security offi cials had reported loud music coming out of the eighth-fl oor condo. Police admitted the resident, Mehdi Zargar, wasn't under arrest when they entered his apartment. e trial judge convicted Zargar of assaulting a police of- fi cer. But on appeal, Superior Court Justice Michael Code said Zargar had every right to use force to remove the police offi cers from his property. Code found police didn't need to enter Zargar's home without his permission or a warrant and that they used a tenuous concern about their safety for keeping the door of the apartment open and walking in. "Weak and speculative concerns about 'offi cer safety' have never been held to justify forcible entry into private premises. e Supreme Court of Canada's recent decision in R. v. MacDonald . . . allows such entry (pushing the door open a few inches in that case) but only on the basis of a demanding standard of 'reason- able grounds to believe that there is an imminent threat to their safety' and not on 'the basis of a vague concern for safety,'" wrote Code. Earlier this year, the Supreme Court upheld a police offi cer's warrantless entry into a home in MacDonald. e offi cer had gone into a home to make an arrest a er noticing the person at the door was hiding a gun. In Zargar, the court was "setting an outer limit" to that expansion of police powers, says Paul-Erik Veel, an associate at Lenczner Slaght Royce Smith Griffi n LLP. In Zargar, an offi cer said he had seen a party of about 10 people in the house and that he didn't know "what was going to come at me af- terwards" if he stepped back and allowed the door to close. Said Code: " is kind of speculative fear of the un- known, when there is a gathering of people in a dwell- ing, could apply to any dinner party or house party and it would eff ectively allow the police to remain, uninvited, at any such gathering. is would amount to an extraor- dinary expansion of police powers." In another decision on March 13, Superior Court Justice Casey Hill overturned the conviction of Max Wilhelm, an Oliphant, Ont., man also charged with assault a er using force to remove a police offi cer from his property. A er receiving a call about a domestic dispute, po- lice said they wouldn't leave the Wilhelm property un- less they saw the family matriarch, who had been inside the house, to make sure she was safe. Police arrived af- ter the Wilhelms' daughter went to the neighbours and complained about a dispute between herself and her mother, who had been drinking. According to the ruling, Wilhelm made "a deal" with the police offi cers that he would bring his wife to the front door if they waited outside. But a er he walked in, he turned around to see one of the offi cers already had a foot in the door, Hill noted. An agitated Wilhelm pushed police out of his house. ey then arrested him for assault. Hill said police had no reason to break the deal and found the offi cer's move to put a foot in the door was akin to trespass- ing. " is is not to say that cases may not arise where the po- lice may reasonably and le- gitimately employ a ruse to trick a homeowner into allowing their entry, but where the state sets in motion circumstances leading to a reasonable apprehension on the part of the homeowner that police entry is circumscribed by a particular set of rules, then unilaterally altered by the state, it is diffi cult to see how it can be proven that the homeowner intended to obstruct or assault a peace offi cer he believed to be in the execution of his duty," wrote Hill. Veel says both cases are "very clearly premised on the notion of the sanctity of the home and that police inter- ference with that has to only arise in very exceptional circumstances." e rulings haven't created new law, according to Brown. "Rather, they stand as a reminder that police of- fi cers must follow the law if they intend to successfully convict someone for assaulting them while acting in the lawful execution of their duties." For defence counsel, the cases are a reminder that in similar prosecutions, the onus is on the Crown to prove police were "acting in the lawful execution of their du- ties," Brown adds. LT NEWS . . . allows such entry (pushing the door open a few inches in that case) but only on the basis of a demanding standard of 'reason- able grounds to believe that there is an imminent threat to their safety' and not on 'the basis of a vague concern for safety,'" wrote Code. Earlier this year, the Supreme Court upheld a police offi cer's warrantless entry into a home e offi cer had gone into a home to make an arrest a er noticing the person at the door was hiding a gun. In Zargar, the court was "setting an outer limit" to that expansion of police powers, says Paul-Erik Veel, an associate at Lenczner Slaght Royce Smith Griffi n LLP. an offi cer According to the ruling, Wilhelm made "a deal" with the police offi cers that he would bring his wife to the front door if they waited outside. But a er he walked in, he turned around to see one of the offi cers already had a foot in the door, Hill noted. An agitated Wilhelm pushed police out of his house. ey then arrested him for assault. Hill said police had no reason to break the deal and found the offi cer's move to put a foot in the door was akin to trespass- ing. " is is not to say that cases may not arise where the po- lice may reasonably and le- The court was 'setting an outer limit' to the expansion of police powers arising from a recent Supreme Court decision, says Paul-Erik Veel. BY YAMRI TADDESE Law Times T Brand owners get boost from new ruling on goodwill provision Judges make strong statements on warrantless entries e Supreme Court rejected their sub- missions, holding that there was no likeli- hood of confusion in either case. As the top court saw it, the famous brand owners also hadn't discharged their burden under s. 22, having failed to show that the defen- dants had made such use of suffi ciently similar marks so as "to evoke in a relevant universe of consumers a mental association of the two marks that famous brand own- had purchased Harley-Davidson's screamin' eagle clothing. eral attempts to associate itself with Harley- Davidson. e company unsuccessfully applied to become a Harley-Davidson licensee in 1988-89. Several years later, Berrada at- tempted to register screaming eagle in re- lation to motorcycles. In support, Berrada argued there was no likelihood of confusion, stores and displayed its BY JULIUS MELNITZER For Law Times Photo: Evok20/Shutterstock Harley-Davidson's marks had greater brand recognition and fame with motorcyclists, a judge has found. A

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