The District Court of The Hague rendered judgment on 21 May 2025 in a trademark infringement case between Harley-Davidson Motor Company Inc. and Game Castle B.V. The case concerns the sale of vintage neon signs featuring Harley-Davidson logos. The outcome demonstrates that trademark protection can have far-reaching consequences even in the vintage market, even for relatively minor infringements.
What is this about?
Game Castle B.V., a company specialising in vintage products, sold various Harley-Davidson neon signs through its webshop. These signs contained both the well-known word mark “HARLEY-DAVIDSON” and the “Bar & Shield” logo characteristic of the motorcycle brand.
Game Castle had purchased three neon signs from Entech Europe B.V., one of which proved to be defective. The other two were sold at a German trade fair for €349 and €386 respectively. Harley-Davidson sent a cease and desist letter by registered mail on 30 May 2024, demanding that Game Castle cease the infringement.
Game Castle responded that the products constituted only a very small part of their assortment and that they were not aware of any trademark infringement. They indicated they would no longer sell the neon signs and emphasised that these were vintage Americana products for enthusiasts. The parties could not reach agreement, after which Harley-Davidson filed suit on 18 September 2024.
Protection for well-known marks
The court ruled that trademark infringement had occurred under Article 9(2)(c) of the EU Trade Mark Regulation (EUTMR) and Article 2.20(2)(c) of the Benelux Convention on Intellectual Property (BCIP). These provisions protect “well-known marks” even when the infringing products are not identical to the goods for which the mark is registered.
Game Castle raised various defences. It argued that the Harley-Davidson marks (except for one figurative mark) were not registered for neon lighting and that the marks had not been put to normal use for neon lighting for five years. This latter defence would, if successful, lead to revocation of the trademark rights with respect to Class 9 (neon lighting).
During the hearing, however, Game Castle acknowledged that the Harley-Davidson marks are well-known marks. This acknowledgment meant that the defences regarding registration and use for specific neon lighting became less relevant, since infringement can still occur under sub (b) (similar goods) or sub (c) (well-known marks), where only sub (a) requires the criterion of identical goods.
The missing exhaustion defence
Notably, Game Castle did not invoke exhaustion of trademark rights. This defence holds that when goods bearing a trademark have been lawfully placed on the market by or with the consent of the trademark owner, the trademark right in those specific goods is “exhausted” and resale is in principle permitted.
Game Castle had purchased the neon signs from Entech Europe B.V. and had not manufactured them itself. In the judgment, the court considers that “the parties do not know whether these are original products originally manufactured by Harley-Davidson or lamps produced without Harley-Davidson’s permission.” Perhaps the goods were indeed sourced from Harley-Davidson.
There was thus potentially still an exhaustion defence available – after all, if these were indeed original Harley-Davidson products that had once been lawfully placed on the market, resale could be permitted. However, Game Castle did not raise this defence.
Unfair advantage
The court rules that Game Castle gains unfair advantage from the reputation of the Harley-Davidson marks. Despite the relatively small scale of the sales, Game Castle benefits from Harley-Davidson’s goodwill without paying for it or making any effort.
The court rejects Game Castle’s argument that this concerns decorative use on a very small scale for enthusiasts. Game Castle is a commercial enterprise that aims to make profit, according to the judge.
Granted claims
Despite Game Castle having sold only two neon signs for a total of €735, the court grants most of Harley-Davidson’s claims: an injunction, disclosure obligations, a recall for professional customers, destruction of stock under supervision of a bailiff. All this subject to penalty payments for non-compliance. Game Castle was additionally ordered to pay damages and legal costs of €8,978.
Conclusion
This judgment shows that trademark owners can effectively oppose infringements even in the vintage market, even when dealing with small quantities. For Harley-Davidson, this was possibly a way to create a deterrent effect for other traders.
This case illustrates that even small infringements can have significant financial consequences. Even modest profits or operating a small business do not constitute successful defences against the possible consequences of trademark infringement. Here too we see very limited turnover of just over €700 and an order to pay legal costs of over €9,000 plus damages still to be assessed. In case of non-compliance, an infringer also often risks penalty payments. Particularly in IP cases, where full recovery of legal costs is possible, costs can quickly escalate.
Do you have questions about trademark protection or are you facing a similar situation? Contact our Intellectual Property section. We are happy to assist you.
