Harley-Davidson Motor Co. Group LLC et al. v. Manoukian et al., (2013) 428 F.T.R. 191 (FC)

• Judge: de Montigny, J.
• Court: Federal Court (Canada)
• Case Date: October 15, 2012
• Jurisdiction: Canada (Federal)
• Citations: (2013), 428 F.T.R. 191 (FC);2013 FC 193

Harley-Davidson Motor Co. v. Manoukian (2013), 428 F.T.R. 191 (FC)

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[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

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Temp. Cite: [2013] F.T.R. TBEd. MR.025

Harley-Davidson Motor Company Group, LLC, H-D Michigan, LLC, Harley-Davidson Motor Company, Inc. and Fred Deeley Imports Limited (plaintiffs) v. Varoujian Manoukian a.k.a. Johnny Manoukian a.k.a. Jonathan Manoukian and Vetements de Cuir Originaux V.M. Inc. (defendants)

(T-1518-10; 2013 FC 193; 2013 CF 193)

Indexed As: Harley-Davidson Motor Co. Group LLC et al. v. Manoukian et al.

Federal Court

de Montigny, J.

February 26, 2013.

Summary:

Harley-Davidson Motor Co. Group LLC et al. (plaintiffs) sued the defendants for allegedly offering for sale and selling counterfeit Harley-Davidson merchandise. The plaintiffs moved for summary judgment.

The Federal Court granted the motion for summary judgment and awarded damages accordingly, including punitive damages. The court also issued injunctive relief and ordered the delivery up of infringing merchandise.

Damage Awards - Topic 2028.2

Exemplary or punitive damages - Trademark infringement - [See first Trademarks, Names and Designs - Topic 1816 ].

Damage Awards - Topic 2426

Intellectual property - Trademark infringement - [See first Trademarks, Names and Designs - Topic 1816 ].

Damages - Topic 1318.1

Exemplary or punitive damages - Trademark, name or design infringement - The plaintiffs had the exclusive right to manufacture or license the manufacture of products containing Harley-Davidson trademarks in Canada - The plaintiffs sued the defendants (flea market vendors), for allegedly offering for sale and selling counterfeit Harley-Davidson merchandise (t-shirts, jackets and belt-buckles) on six occasions - The Federal Court allowed the action - The court stated that the wrongful behaviour had gone on for a number of years in blatant disregard of the law and had to be sanctioned with punitive damages - Further, the defendants ignored a cease and desist letter from the plaintiffs - The individual defendant (controlling mind of defendant company) was aware of the illegal nature of his trade - See paragraphs 46 to 51.

Trademarks, Names and Designs - Topic 1816

Trademarks - Infringement - Remedies - Damages - The plaintiffs had the exclusive right to manufacture or license the manufacture of products containing the Harley-Davidson trademarks in Canada - The plaintiffs sued the defendants (flea market vendors) for allegedly offering for sale and selling counterfeit Harley-Davidson merchandise (t-shirts, jackets and belt-buckles) on six occasions - The Federal Court allowed the action and awarded damages - The court, noting difficulties in proving actual damages, applied a minimum compensatory damage award on a per infringing activity basis (i.e., $3,625 for three of the incidents and $7,250 for the other three incidents) - Since the plaintiffs were seeking damages on behalf of the trademark owner and the licensee/distributor, those amounts were doubled for a total of $65,250, payable jointly and severally by the defendants - Punitive damages of $50,000 were also awarded - See paragraphs 39 to 53.

Trademarks, Names and Designs - Topic 1816

Trademarks - Infringement - Remedies - Damages - The Federal Court stated that "... When a defendant has delivered absolutely no documents to substantiate his manufacture and sale of counterfeit wares, as is the case here, it is obviously difficult, if not impossible, to assess the exact extent of the actual damages. In such circumstances, this court has applied a minimum compensatory damage award on a per infringing activity basis ... as follows: a) $3,000.00 against flea market vendors, street vendors and itinerant sellers; b) $6,000.00 against fixed retail establishments; and c) $24,000.00 against importers, distributors and manufacturers ..." - The court noted also that those amounts could be adjusted for inflation and that a multiplication of the minimum compensatory damage figure could be used in instances where there was evidence of ongoing activities that represented more than a single instance of infringement - See paragraphs 39 to 43.

Trademarks, Names and Designs - Topic 1816

Trademarks - Infringement - Remedies - Damages - The Federal Court stated that "... When a defendant has delivered absolutely no documents to substantiate his manufacture and sale of counterfeit wares, as is the case here, it is obviously difficult, if not impossible, to assess the exact extent of the actual damages. In such circumstances, this court has applied a minimum compensatory damage award on a per infringing activity basis ... Canadian courts have also held that in circumstances involving counterfeit activities by a defendant in which the intellectual property rights of multiple plaintiffs have been infringed, each plaintiff is entitled to damages, as a defendant would be liable for damages to each plaintiff if each plaintiff enforced its rights individually. The minimum compensatory damage award should reflect the damages suffered by both the trade-mark owner and the license/distributor ..." - See paragraphs 39 and 43.

Cases Noticed:

Granville Shipping Co. v. Pegasus Lines Ltd. S.A. et al., [1996] 2 F.C. 853; 111 F.T.R. 189 (T.D.), refd to. [para. 30].

NFL Enterprises Limited Partnership v. 1019491 Ontario Ltd. et al. (1998), 229 N.R. 231; 85 C.P.R.(3d) 328 (F.C.A.), refd to. [para. 30].

Garford Pty. Ltd. v. Dywidag Systems International Canada Ltd. et al. (2010), 375 F.T.R. 38; 99 C.P.R.(4th) 7; 2010 FC 996, affd. (2012), 428 N.R. 306; 99 C.P.R.(4th) 392; 2012 FCA 48, refd to. [para. 31].

AMR Technology Inc. v. Novopharm Ltd. et al., [2008] F.T.R. Uned. 690; 70 C.P.R. (4th) 177; 2008 FC 970, refd to. [para. 31].

Harrison et al. v. Sterling Lumber Co. (2010), 399 N.R. 21; 2010 FC 21, refd to. [para. 31].

Society of Composers, Authors and Music Publishers of Canada v. Maple Leaf Sports & Entertainment, [2010] F.T.R. Uned. 466; 2010 FC 731, refd to. [para. 35].

Film City Entertainment Ltd. et al. v. Golden Formosa Entertainment Ltd. et al., [2006] F.T.R. Uned. 916; 2006 FC 1149, refd to. [para. 37].

Video Box Enterprises Inc. et al. v. Lam, [2006] F.T.R. Uned. 326; 2006 FC 546, refd to. [para. 37].

Ragdoll Productions (UK) Ltd. v. Jane Doe et al. (2002), 223 F.T.R. 112; 21 C.P.R.(4th) 213; 2002 FCT 918, refd to. [para. 39].

Oakley Inc. et al. v. Jane Doe et al. (2000), 193 F.T.R. 42; 8 C.P.R.(4th) 506 (T.D.), refd to. [para. 40].

Louis Vuitton Malletier S.A. et al. v. Yang et al., [2007] F.T.R. Uned. 803; 62 C.P.R.(4th) 362; 2007 FC 1179, refd to. [para. 41].

Guccio Gucci S.p.A. et al. v. Mazzei, [2012] F.T.R. Uned. 188; 101 C.P.R.(4th) 219; 2012 FC 404, refd to. [para. 42].

Louis Vuitton Malletier S.A. et al. v. Singga Enterprises (Canada) Inc. et al. (2011), 392 F.T.R. 258; 2011 FC 776, refd to. [para. 43].

Whiten v. Pilot Insurance Co. et al., [2002] 1 S.C.R. 595; 283 N.R. 1; 156 O.A.C. 201; 2002 SCC 18, refd to. [para. 47].

2703203 Manitoba Inc. v. Parks et al. (2006), 239 N.S.R.(2d) 348; 760 A.P.R. 348; 47 C.P.R.(4th) 276; 2006 NSSC 6, refd to. [para. 48].

Counsel:

Lorne Lipkus and Georgina Starkman Danzig, for the plaintiffs;

Felipe Morales, for the defendants.

Solicitors of Record:

Kestenberg Siegal Lipkus LLP, Toronto, Ontario, for the plaintiffs;

Audet F.G. & Associes, Montreal, Quebec, for the defendants.

This case was heard in Toronto, Ontario, on October 15, 2012, before de Montigny, J., of the Federal Court, who delivered the following decision on February 26, 2013.