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4 June 2024NewsTrademarksMuireann Bolger

Harley-Davidson takes aim at Next over motorcycle motif

US brand sues retailer at UK court in “surprising development” over graphic on girl’s T-shirt | Product has given Next an “unearned and undeserved boost to its marketing”, argues lawsuit.

Harley-Davidson has sued Next alleging that the UK fashion retailer infringed its trademarks through the production and sale of a ‘motorbike-inspired’ t-shirt for girls.

The US brand filed the complaint at the UK Intellectual Property Enterprise Court, arguing that a graphic on a Next T-shirt is likely to lead to consumer confusion and takes unfair advantage of Harley-Davidson’s reputation.

Next has to date sold large quantities of clothing bearing the branding and/or distinctive graphic material of third parties, for example Harry Potter, Barbie and Peppa Pig, as well as clothing made by third party brands such as Nike, Adidas, Levi’s, Reissand Gap.

An unusual development

Commenting on the case, Beatriz San Martin, partner at Arnold & Porter, found its emergence in the UK courts “surprising”.

“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 explained.

“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.”

The product at the centre of the case—the ‘Black fearless stud graphic long sleeve T-shirt’—has been offered in sizes for children ranging from 3 to 16 years old since at least January 2024, according to the complaint.

An ‘unearned boost’ to marketing

Harley-Davidson alleged that Next specifically references the fact that the T-shirt has ‘motorbike inspired’ chest graphics, and that the sign is ‘motorbike-inspired’.

The suit emphasised the “fame” of the Harley-Davidson brand and, and the fact that black and flame and wing motifs are often used in combination with its branding and the trademarks.

This means that the individuals at Next who designed and/or ordered the T-shirt would have been well aware that the sign “would call these to mind for many members of the public”, it added.

Distinctive character

The use of the sign, the complaint insisted, takes unfair advantage of the distinctive character and repute of Harley-Davidson’s trademarks, by giving Next an “unearned and undeserved boost to its marketing”.

Confusion aside, the suit contended that the average consumer will more readily be able to remember the disputed Next T-shirt due to their “familiarity and positive perceptions” of Harley-Davidson’s marks.

“Given Next’s knowledge of the claimants and the Harley-Davidson brand (which can be inferred given their fame), it can reasonably be inferred that Next knew or ought to have known that its use of the sign would provide Next with such a boost,” according to the filing.

Harley-Davidson’s assistant general counsel Adraea Brown submitted and signed the complaint.

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