Europe, Middle East and Africa Team of the Year: Harley-Davidson
Managing and protecting around 5,000 registrations worldwide, Harley-Davidson’s trademark function comprises a svelte team of two attorneys and two paralegals based in Milwaukee, and three brand protection professionals located in Milwaukee, Singapore and Oxford.
Until recently, Mark Bearfoot served as brand protection manager for Europe, the Middle East and Africa (EMEA) in Oxford. A director and council member of both the Anti-counterfeiting Group and the Chartered Institute of Trademark Attorneys (which saw him contribute to the wider trademark ecosystem in Europe), Bearfoot managed all aspects of trademark enforcement and brand protection across EMEA in his role at Harley-Davidson.
Canny management of an international network of law firm partners has been key to Bearfoot’s success, as well as that of the global Harley-Davidson team. Nominations praised the group’s proactive, cooperative approach and the company has been keen to nurture those relationships and reward partners for their efforts.
During this year’s INTA Annual Meeting, for example, a tweet from Paul Johns, head of dispute resolution at Baldwins Intellectual Property, showcased a continuous improvement award presented to his firm by Harley-Davidson. Bearing the Harley-Davidson logo, this highlighted appreciation for Baldwin’s “support and outstanding accomplishments in trademark portfolio administration in 2018”. Such shout-outs serve both to recognise achievements and to motivate firms across the network to go above and beyond.
The latter is critical for Harley-Davidson, as the trademark team demands that law firm practitioners fully understand the reality of in-house practice. “When working with those outside the United States, there are challenges like time zones and different cultures. The only time that I have had to reset expectations is when outside counsel has unrealistic expectations of what an internal person can do,” observed Linda Heban, vice president and chief trademark counsel at Harley-Davidson, speaking at the 2017 Managing Trademark Assets event in Chicago. “I had one instance where our external counsel drafted a 40-page declaration, but no person in the company had the knowledge required to sign. I had to say ‘I’m not going to educate someone on how this other company’s business model works’. They can’t testify to the intricacies of a counterfeiter’s business.”
As well as enforcement and brand protection, the team gets involved in monetisation efforts around its rights. While Heban notes that “the licensing business is actually only a small part of our merchandise portfolio”, it does involve responsibilities for the legal department. “We partner with licensees when there is a business need that the company cannot realistically fulfil. Sometimes licensees do not fully appreciate the limits of their rights and can take action outside the scope of the licence agreement. The brand protection team works closely with the licensing department to address these situations.”
Collaboration is a theme that continually crops up when speaking to Heban. “The right tools”, “a network of talented legal professionals who understand the business and the business’s challenges and priorities” and an internal department boasting “smart people who are fully engaged in maintaining and protecting the brand”, she suggests, are the foundation of Harley-Davidson’s efforts to protect and leverage the brand. As was the case in 2017, this collective mindset has contributed to some major wins this year. For instance, on 24 April 2018 in Harley-Davidson v Sun Frog the team “obtained the largest ever trademark award ($19.4 million) against an online t-shirt counterfeiter”, and it is well-positioned to continue notching up similarly impressive victories.