Harley-Davidson, the name does not just mean a motorcycle, it has transcended into something big, a culture in itself. When the Davidson brothers and their friend Bill Harley set on the path to create the motorcycle for freespirit, even they could not have imagined how big an influence it would have on the North American pop culture. From tattoos, beers, merchandise, jewellery, even cafes; to call it a marketing success would be underplaying it. The brand made $300 million on merchandising sales itself in 2017, which excludes parts and accessories. After a hundred years of successful stint in the United States, the brand has infiltrated the Indian market catering to the wealthy, mountain-loving youth of India.
One of the key reason for this overwhelming success can be attributed to how the brand has handled its popularity and aligned it with its unique intellectual property protection which has made it stand out among others. In the year 1994, the company filed for what is called the most controversial yet unique trademark application in US history, the sound of its V-twin engine which is also known as the Harley Roar. From then, Harley has been a perfect example of creating brand value by creatively handling its trademarks, copyrights, designs, etc. In this article, we discuss these creative aspects of its trademark policy which has made it a forerunner in the biker counterculture and how Indian brands can learn a lesson or two from this century-old master.
Hands off the merchandise
Recently, in April 2018, Harley-Davidson was granted $19.2 million as statutory damages in a suit against SunFrog.com, an online customisation website, which allowed users to create designs to be printed on clothes, accessories, mugs, etc. The website had more than 100 infringing products bearing the famous Harley logos for which Harley had asked for a preliminary injunction in May 2017. The claim stated that SunFrog had infringed the famous ‘Bar and Shield Logo’, ‘Willie G. Logo’ and ‘Number 1 Logo’ (images above) among other famous trademarks owned by the brand. In the 81-page order, the Eastern District of Wisconsin Court granted a permanent injunction against the website, ordering the hefty sum as damages. Underlining the popularity of the Harley-Davidson trademarks, the Judge stated: “Harley-Davidson’s licensed products business has also been wildly successful, with Harley-Davidson’s royalty revenues from licensing exceeding $400 million during 2005–2016 alone, which translates into billions of dollars of sales of licensed products at retail.” This clearly demonstrates how even the courts have recognised the stature of the brand not only from the bikes it manufactures but, from its other products which makes it a success story in pop culture.
In addition to this case, it is pertinent to note that Harley-Davidson was held as a well-known mark by WIPO Arbitration and Mediation Panel in H-D Michigan, Inc. v. Metal Horse Motorcycles, Case No. D2003-0781. This can be used by Harley as a strong argument to enforce their trademark rights across all the 45 Classes, including clothing, regardless of their registrations.
The ‘Hog’ trademark
In 1999, in Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir., 1999), the company sued a motorcycle repair shop in New York called ‘Hog Farm’ from using the term ‘hog’ to describe its services, as the company’s large motorcycles are known as ‘hogs’ in pop culture. The Court of Appeals of N.Y. District rejected the company’s claim over the term ‘hog’, however, warned the repair shop to stop using logo similar to that of the motorcycle manufacturer. Although a failed attempt, the reason for this move is the fact that HOGs, which stands for Harley Owner Groups, is one of the most unique marketing strategies the brand has adopted. Started in 1983 in the US, these groups were created to build a sense of brotherhood amongst the owners of the motorcycles. The sales to HOGs contribute to a large portion of Harley’s merchandising revenue.
Our expert, Utkarsh, states that such a strategy makes a brand more visible and is a great aid in furthering the brand presence. Moreover, it shows how despite the adverse judgment, Harley still managed to protect its brand value and to send out a warning to other unauthorised users of its trademark.
Harley v. Fashion Brands
Harley has been aggressively going after clothing and apparel brands who try to take unfair advantage of its unique products and pass off their goods as that of Harley’s. December of 2017 saw Harley-Davidson sue the famous sports apparel brand Affliction for the use of a logo similar to the Harley Bar and Shield logo. Harley sent cease and desist letters to the company for its 20 products bearing the famous marks, but the company took down only 6 of them. The case is sub judice and Harley has demanded $2 million as damages for the same. In similar fashion, Harley sued Forever 21, a famous women’s clothing and accessories brand, for usage of the same bar and shield mark on its jackets and other clothing. In the same year, it sued GearLaunch and UrbanOutfitters separately as they infringed various Harley marks.
Look and Feel
Utkarsh opines that the reason Harley is going after the above-mentioned brands is that if a characteristically unique product which is usually associated with Harley is used by another brand, people might confuse the infringer to be in association with Harley. He states that Harley is trying to stop others from copying their ‘look and feel’, apart from the obvious infringement and passing off countermeasures it takes for its trademarks. The look and feel test protects the trade dress of a product which requires that the trade dress be distinctive and non-functional. The test in India is – “Would a consumer with average intelligence and imperfect recollection confuse between the products in question?” In the above cases, all three essentials were satisfied and it is clear that the companies were trying to copy the look and feel of the brand value created by Harley by using similar logos and designs. In the mid-90s, Harley, in a bid to protect its look and feel, sued Honda for their bike Honda Shadow American Classic Edition(ACE) for it had a distinct cruiser look as well the same V-twin engine to produce a sound like Harley.
Lessons from Harley
Harley has a unique position not only in the motorcycle market but in the pop culture as well. The success and popularity can be attributed to Harley’s robust marketing activities and the unique ‘image’ it has created for itself in the market. This ‘image’ is further used for selling allied goods such as clothing, helmets, beer, etc. All of Harley’s merchandise, products, services, even tattoos further that ‘image’ and the company’s goodwill.
Next step on the road to popularity was the regulation of how the motorcycle brand was used, referred to and portrayed in the media and the market. There are countless movies, TV shows and events which feature the brand. Remarkable trademark enforcement strategies coupled with prosecution policies that were well-thought and far-reaching helped Harley control and fine tune how its fans, competitors, counterfeiters and the general public used the motorcycle’s numerous trademarks.
The key to Harley’s popularity and the reason they have avoided brand dilution and genericide is their strong IP policy. In light of the recent discussion in the Indo-US trade talks of 2018, post which the brand aims to manufacture its iconic bikes in India making them more accessible and affordable to the Indian market, it is fair to assume that they will come ready to implement their well-rounded IP policy in India. They already have various ongoing marketing strategies in India such as the Harley Rock Riders music festival which happens across various Indian cities. It is safe to say that brands with trademark enforcement strategies half as innovative as that of Harley would consider their job well done.
Apart from expecting stiff competition, a lot of Indian brands and especially motorcycle brands have a lot to learn from Harley’s success. When we think of an Indian brand which comes close to Harley, the first name which comes to mind is Royal Enfield. After nearly becoming extinct in the mid-2000s, the Enfield brand now enjoys a cult status among Indian bikers. However, it’s not close to what its US counterpart enjoys. Royal Enfield’s Bullet tried to enter the Indian merchandising and accessories market with helmets, biking and clothing merchandise but, with limited success. Utkarsh believes that the answer lies in the basics;
He states that “In order to protect intellectual property, one has to ensure that it is recognised by the public. And the best way to ensure such recognition is advertisements – you have to first ensure that it is recognised as unique. Trademark rights are all about use and it is well and good if you adopt a name, but, till you can show that it is used by the target demographic, it is unlikely that the Courts will help you enforce your rights against infringers. Creatively using your mark in advertisements ensures a great value of the brand’s appeal.”
Further, Utkarsh asserts that targeted advertising, product placements and sponsorships can be used to generate a specific look and feel for a brand. E.g. Bullet bikes used by the Army to create a macho image, Enfields used by good-looking heroes in movies, and Red Bull and Bacardi sponsored heavy-metal music events.
An IP policy which focuses on the relevant demographic, targeted enforcement measures to protect the trademarks and other intellectual properties and a brand strategy akin to Harley-Davidson’s might be the next step for Indian brands.
DISCLAIMER: The information provided in this article is for educational purposes only. The same cannot be construed as legal advice.