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In-house Insight

March 2017

Q&A with Mark Bearfoot of Harley-Davidson. Mark has been the Brand Protection Manager for Harley-Davidson for 4 years now so we wanted to get the lowdown on his route to working for one of the most recognised brands in the world, his thoughts on what makes a successful IP strategy and obviously the three items he cannot live without!

So where did it all begin? In 1998 Mark started out at a specialist IP private practice law firm as a paralegal and spent 8 years building up his knowledge and experience at a number of specialist IP firms. In 2006 he made the move in-house to join The Coca-cola Company. There Mark assisted with the management of all aspects of the company’s intellectual property, from trade mark clearance and filing programmes, to oppositions, cancellation actions and litigation proceedings. In 2013 Mark joined Harley-Davidson as its Brand Protection Manager. Mark’s days are spent managing the Company’s trademark enforcement and brand protection activities across Europe, the Middle East and Africa. Alongside his day job, Mark is also an active member of the CITMA Council and the UK Anti-Counterfeit Group. Here come the questions…

Harley-Davidson is considered to have an effective brand enforcement strategy. What do you think has been key to its success?

When I joined Harley-Davidson, I established a brand protection strategy built around four key pillars.  These pillars of Prevent, Disrupt, Enforce and Engage allow us to focus our efforts, develop programmes and undertake activities which ensure they deliver the best results for our overall objectives as a department.

We PREVENT the dilution of our trademark rights and diminish the risk of counterfeiting through:

  • Governing the use of our trademark rights and ensuring correct and consistent use;
  • Maintaining detail knowledge of our labelling, packaging and anti-counterfeiting devices adopted across our various genuine product ranges, as well as our supply chain; and
  • Monitoring the marketplace for infringing activities.

We DISRUPT the manufacture, distribution and sale of counterfeit and infringing goods through:

  • Securing the detention of counterfeit and infringing goods at National borders;
  • Providing comprehensive support to law enforcement agencies;
  • Monitoring e-commerce platforms; and
  • Seeking the removal of infringing pages and/or images from social media platforms.

We ENFORCE our trademark rights against third party infringers via both civil proceedings and/or criminal prosecutions, as follows:

  • Undertaking detailed investigations;
  • Following pre-action protocol when appropriate and necessary; and
  • Seeking search and seizure orders and securing successful criminal prosecutions where possible.

We ENGAGE with our stakeholders to advance our Prevent, Disrupt and Enforce strategic objectives through:

  • Educating Harley-Davidson employees, and associates on brand standards;
  • Promoting the role of the Trademark and Brand Protection Team;
  • Providing training to external stakeholders, notably law enforcement agencies, on the identification of counterfeit Harley-Davidson products; and
  • Meeting with professional associations to understand and share best practices in brand protection strategy.
Are you seeing increased IP issues for the brand around the rise of Instagram and Snapchat as advertising outlets?

We have certainly witnessed a rise in the use of particular social media platforms for the sale of counterfeit goods – notably Facebook and to a lesser degree Instagram.  We regularly receive complaints from customers about posts advertising the sale of counterfeit goods in community Facebook pages and groups which are targeted towards the riding community.  Unlike tradition e-commerce platforms like eBay which have very sophisticated search systems which allow us to quickly identify and remove listings for counterfeit goods, many community pages are closed groups which prevent simple but effective monitoring. This is a key issue that Facebook must address if they are serious about creating a safe environment for their 1.8 billion active members.

In-house perspective on Brexit?

From an IPR owner perspective, our concerns are around the likely increase in our annual trademark filing, prosecution and renewal fees following the need to seek national rights in the UK going forward.  The eventual move away from harmonised trade mark law and practice in the UK is another area of concern.

Most interesting case this year?

The most interesting case I’ve worked on recently was the discovery of counterfeit Harley-Davidson headphones and speakers being offered as free promotional material when you purchased a laptop from a major electronics retailer in the Middle East.  When we approached the retailer and subsequently his supplier, they provided us with a copy of its licence agreement which appeared to have been issued by one of my legal colleagues in the US.  This was bizarre on a number of levels.  Firstly, neither my colleague, the broader legal department or more importantly our licensing department had any knowledge of the appointment of this licensee.  Secondly, the licence agreement was not our standard licence agreement.  And lastly, the signature of my legal colleague was completely wrong.  It transpired that it had acquired the licensee agreement from a licensing agent in Europe in good faith.  Upon further investigation we discovered that this agent had previously approached our licensing team for a license but this had been rejected. It appears that the agent then decided to proceed anyway and drafted a fake license agreement and forged the signature of my colleague.

What are the 3 things in your office that you couldn’t be without?

My notebook, my company iPhone and my Oxford English Dictionary (which I’ve had since I was 17!).

If you weren’t a brand protection lawyer what would you be?

A zoo keeper!  I’ve had a passion for wildlife conservation since I was a small child and my dream job has always been to work at a zoo.

Favourite brand (other than Harley!)?

That’s a tough question! There are so many iconic brands and I’ve been fortunate enough in my career to have worked with a number of brands with incredible heritage.  To me a great brand is both inspirational and aspirational.  If I have to give just one brand, other than Harley-Davidson of course, it would be Ralph Lauren.  I’m inspired every time I visit their Bond Street store!

Where do outside counsel go wrong?

Communication is so important.  I’m responsible for 52 markets and am typically managing over 350 active enforcement matters at any one time.  It’s therefore difficult to recall the background to a specific matter and so I rely on my outside counsel to provide that background in every email and telephone conversation I have with them.  One of my biggest frustrations is when counsel refer to previous correspondence but then do not incorporate that chain of correspondence in their email.  Another frustration is when Counsel do not provide recommendations.  Whilst a detailed analyses of the law is important to allow me to understand the various aspects of the legal arguments and to make a final decision, I do expect Counsel to give their recommendation.

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