Easy ride for HARLEY mark owner in Simply Harley dispute

In H-D Michigan Inc v MC World Ltd, the Federal Court of Australia has ruled that the defendant's unauthorized use of the name Simply Harley infringed the plaintiff's rights in its famous HARLEY and HARLEY DAVIDSON marks. The court also issued an order restraining the defendant from engaging in any future infringing conduct.

H-D Michigan is the registered owner of a large number of registered trademarks, including HARLEY, HARLEY-DAVIDSON MOTORCYCLES and BUELL together with devices relating to those marks. These marks are registered in respect of motorcycles, motorcycle parts, T-shirts and caps, as well as retail services in connection with the sale and repair of motorcycles, and information services relating to motorcycles.

MC World Ltd carries on business under the name Strictly Harley. Signage displayed at its business premises included that name, as well as the marks HARLEY, HARLEY-DAVIDSON, BUELL and related device marks. MC World also displayed for sale goods bearing H-D Michigan's marks, including T-shirts, caps and business cards. MC World's advertising featured the business name Strictly Harley and the HARLEY-DAVIDSON and BUELL marks. MC World's use of H-D Michigan's marks was not licensed.

H-D Michigan commenced proceedings against MC World and the controlling mind behind the company, an individual named Jozsef Kalmar, on the grounds that their conduct infringed the Trademarks Act 1995 and the Trade Practices Act 1974.

The Federal Court upheld H-D Michigan's complaint. It was satisfied on the evidence that MC World and Kalmar had infringed H-D Michigan's marks. It also held that their conduct contravened Section 52 of the Trade Practices Act and Section 42 of the Northern Territory of Australia's Consumer Affairs and Fair Trading Act 1990 since it was conduct in trade or commerce that was misleading and deceptive. The court was also satisfied that MC World and Kalmar had passed off their products as those of H-D Michigan.

The court issued an order restraining MC World and Kalmar from engaging in conduct that would infringe H-D Michigan's trademarks in the future or would constitute:

• contravention of the Trade Practices Act;
  
  
• contravention of the Consumer Affairs and Fair Trading Act; or
  
  
• passing off.

Julian Gyngell, Clayton Utz, Sydney