With the news that Coca-Cola and Oreo have announced a double collaboration with a limited edition zero sugar drink in a black and white can – and a Coca-Cola flavoured biscuit from the biscuit manufacturer, it simply serves to illustrate a key trend in the food and drink sector that shows no sign of abating.
INTA Table Topic Discussion
This year, at the annual International Trade Mark Attorney (INTA) conference in Atlanta, I sat down with ten other attorneys with in-depth knowledge of the food and drink sector. One of the benefits of attending INTA is the opportunity to meet and learn from trade mark attorneys from around the world, operating across similar sectors and dealing with similar issues. At a table topic event, we were discussing some of the issues common to us all – and guess what the unscripted topic of conversation was that came up – yes, brand X brand collaboration.
Clear Collaboration Benefits
While the benefit to brands is easy to see - as the collaboration expands, each party’s product to the other’s drives admirable publicity and buzz (and for the most part for free due to reporting and social media), the focus of the table topic discussion is what can go wrong and how often the intellectual property aspects are not addressed. A collaboration may initially only be to produce a limited edition product for a short period of time, and often brand owners are not necessarily keen on in-depth contracts and lawyer fees for an untested, short-term product.
Intellectual Property Considerations
Indeed, from a novelty and publicity perspective, limited edition products can work well to quickly boost sales and publicity, however, the collaborating brands do need to be mindful of the intellectual property being generated for the new product(s), with their brand, name and reputation at the centre.
Brand Usage
While licensing each party’s use of the other party’s mark seems obvious, it is important to ascertain if each brand is protected and registered for the collaboration product - or could the application of the brand to a different product than it is usually used, infringe an existing rights holder? Neither party will wish the negative publicity of an infringement claim arising. Ideally, due diligence via searching and trade mark registration in the new product sector should be undertaken.
Artwork and Design Rights
Artwork generated for the product will create copyright, which will rest with the creator, and in addition, design rights will arise and potentially design registrations sought – but who should be the owner? Joint ownership is an option but needs to be addressed in an agreement to deal with what happens at termination. You do not wish your collaboration partner to be able to move on to a new partner (possibly a competitor product to your own) using the same artwork used for the earlier collab and benefiting from your product reputation and earlier involvement.
Collaboration Advice
Intellectual property is a large aspect of brand collaboration. Before entering into a collaboration with another brand, no matter how well-known either party are, I would recommend understanding the rights and limitations of using each party’s brand. Due diligence, potential additional trade mark registrations, ownership of new artwork for the collab product and what happens at termination are factors which need to be addressed.
All too often, companies focus solely on the commercial aspects and benefits of the deal, such as royalties, and involve their trade mark attorneys only when issues arise. Prevention and protection is always better than reactionary measures and so ensuring compliance early on in the collaboration process can help to protect you, your brand, and your products.
For more information about how Murgitroyd can help to protect and advise on collaborations, get in touch.
