H&M Hennes & Mauritz AB
"Firms tend to think that quality lies only in the packaged law – it does not"
The clothing retail industry is a fast-moving one. How do you keep abreast of the latest developments in the sector to ensure a cutting-edge approach to your brand strategy?
The speed with which the industry is moving – with new sales channels opening up and legal brand strategies supporting commercial brand strategies in this new environment – poses a major challenge. Conflict arises from the different speeds of the core processes in the company (eg, sales and marketing). My main challenge is to convey, align and implement an understanding across those departments. To do that, we work with the best law firms and trademark attorneys. Our IP network is vital.
What is the one change that you would make to the trademark environment and why?
If I could have one wish come true, it would be to align trademark law on an international level. We apply a worldwide trademark strategy and have registrations in all countries with functioning trademark authorities, which is an extremely complex task. If the law was more aligned, this task would be easier.
When seeking to prosecute a trademark portfolio in countries around the world, how do you ensure that global protection is achieved without blowing the budget?
The best scenario is to show the value that I can deliver. From this perspective, it is easy to argue that any costs are necessary to drive that value. Theoretically, the roof of my budget is where the costs and value are equal. However, such high costs are not motivated, as any cost in the real world has to create a higher yield. Negotiating a budget from a value perspective is therefore important.
The second step is to ensure that our suppliers can help to predict the costs of maintaining such a budget. Legal suppliers are generally vague in assessing costs, but we have seen some improvement in the market, which we appreciate. Advancements in technology will also help us in the future.
What are the key qualities that you look for in outside counsel when building a law firm network?
As in any operation, consideration must be made of cost, efficiency, quality, speed and flexibility. We need a transparent environment in which to talk to our law firm network about these things. Firms tend to think that quality lies only in the packaged law – it does not. Other factors can be even more important. Therefore, meeting and communicating with counsel is key not only to learn how they operate, but also to teach them about our major concerns.
Finally, if you were to give one piece of advice to someone seeking a career in the corporate trademark environment, what would it be?
Communication with other departments is essential. We must remember that our team is just one of many in the corporate environment, where everyone competes for limited resources, irrespective of how big they are. We need to be able to communicate our specialist skills in a general manner to win the confidence of others. Therefore, one piece of advice is to develop your generalist knowledge as well as your speciality. This helps you to speak more languages.
Head of Intellectual Property [email protected]
Björn Norberg has been an in-house legal counsel at H&M Hennes & Mauritz AB for 20 years, during which time H&M has grown from 650 stores in 12 countries to approximately 5,000 stores in 75 countries.
- handles the IP portfolio of the H&M group (comprising eight store concepts);
- pre-checks design work and educates the design teams;
- drafts, reads and negotiates licence agreements; and
- coordinates with external counsel, designers and management on infringement cases.
Click here to see his WTR 300 2019 profile.