Harley-Davidson sues Next for alleged trademark infringement over kids’ t-shirt

Unusual move sees iconic motorcycle manufacturer bring claim against retailer at UK High Court
Lafayette - Circa April 2018: Emblem and Engine of a Harley Davidson. Harley Davidson Motorcycles are Known for Their Loyal Following III

Jonathan Weiss; Shutterstock

Harley-Davidson is suing the UK retailer Next for allegedly infringing its trademark in the design of a children’s t-shirt.

The case was filed at the High Court’s Intellectual Property and Enterprise Court last month. The allegedly infringing item is a long sleeved children’s black t-shirt, featuring angel wings and flames with the text “Fearless heart, rise and roar”.

In court documents, Harley Davidson says Next specifically references that the chest graphics on the t-shirt were “motorbike inspired”. Given the fame of the Harley-Davidson brand and the fact that “black and flame and wing motifs” are often used in combination with the motorcycle maker’s branding and trademarks, it alleges that Next designers were aware that the chest graphics on the t-shirt were similar to its trademarks and “would call them to mind for many members of the public”.

It continues that Next’s design “gives rise to a likelihood of confusion on the part of the relevant average consumer namely ordinary members of the public”. 

The garment in question is described by Next online  as a “Black Fearless Stud Graphic Long Sleeve T-Shirt” and retails between £6 and £8.50 for children aged from 3 to 16 years.

Harley-Davidson is seeking a declaration from the court that Next has infringed its trademarks and an order that it destroy “all infringing materials”. It did not quantify damages.

Beatriz San Martin, partner in the intellectual property practice at multinational firm Arnold & Porter, said that in the vast majority of cases this type of brand dispute, “which is very common between brand owners and retailers, is resolved without having to seek recourse from the courts”. 

She added: “Given that Next has design freedom to change the logos used in its clothing range and the t-shirt being complained about by Harley-Davidson is unlikely to have resulted in significant sales, I am surprised that this claim has been issued and that the parties were not able to come to an agreement out of court.”

Milwaukee-based Harley-Davidson has been involved in a number of high profile legal disputes, one notable case was in 2017 when it sued another retailer, Urban Outfitters, and its subsidiary Free People, for infringing its trademarks by taking originally branded Harley goods, in this case body suits, and altering them; the parties eventually settled out of court.

The US motorcycle manufacturer still makes most of its revenue from its motorbikes and parts arm, but it has a sizeable apparel division. According to its latest quarterly revenue results, it made US$64m from its apparel arm, $1.22bn from motorcycles and $166m in parts and accessories.

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