Media trust workshop brand partnerships

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Garry Mills, Head of Trade Marks and Brands at Innovate Legal shares expertise in protecting and valuing your brand, at a Media Trust seminar

Garry Mills, Head of Trade Marks and Brands at Innovate Legal shares expertise in protecting and valuing your brand, at a Media Trust seminar

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  • 1. Corporate Partnerships Garry Mills Head of Trade Marks and Brands Innovate Legal Media Trust Brand Protection Masterclass 26 January 2012© 2012 Innovate Legal Services Limited
  • 2. Overview 1. Introduction 2. Potential benefits/risks of partnerships 3. Examples of recent corporate/charity partnerships 4. Outline of a partnership 5. Conclusions 6. Case Study© 2012 Innovate Legal Services Limited
  • 3. Introduction Examples of Recent Projects • collaboration agreement between an environmental charity and well-known retailer, including brand licence • helping a health charity to create and protect a “certification” logo to be licensed to commercial partners • Advising a charity on development of a software product and on licensing it to sister charities • Advising an employment charity on collaboration with a major ISP© 2012 Innovate Legal Services Limited
  • 4. Potential Benefits and Risks of Partnerships Potential Benefits - revenue - access to partner’s markets, customers and contacts - employee motivation - brand visibility - other benefits Potential risks - unsuitable partner / damage to reputation - loss of control of brand - costs - other risks© 2012 Innovate Legal Services Limited
  • 5. Examples of Charity and Corporate partnerships Case study 1: RNIB and Microsoft strategic relationship: Source: RNIB website (www.rnib.org.uk)© 2012 Innovate Legal Services Limited
  • 6. Examples of Charity and Corporate partnerships Case study 2: National Trust and Fired Earth Source: National Trust website (www.nationaltrust.org.uk)© 2012 Innovate Legal Services Limited
  • 7. Evaluating IP / Identifying Partners What IP does the charity have that could benefit a commercial partner? •Brand name/logos/slogans etc consider creating a new “bespoke” logo/sub-brand for licensing •Know-how, content and expertise •Software and other IP assets Who are suitable potential commercial partners? •likely to depend on the charitable sector concerned© 2012 Innovate Legal Services Limited
  • 8. Protecting IP Once the Charity’s key IP has been evaluated, essential to consider the options for protection. If the Charity’s brand or other IP is not protected: - Increased risk of 3rd party misuse or “squatting” - Less attractive for potential partners: concerns about “piggybacking” Important to ensure that key IP is properly protected to ensure exclusivity.© 2012 Innovate Legal Services Limited
  • 9. Protecting IP There are two forms of protection for IP - Registered - Unregistered For some kinds of IP, unregistered protection arises automatically. However, the most effective method of protecting IP is by registration.© 2012 Innovate Legal Services Limited
  • 10. Protecting your Brand In particular, registering brand elements is highly advisable: Enforcing registered trade marks is usually easier and less costly than enforcing unregistered rights. Absence of protection may discourage corporates from partnering. Consider protecting key brand elements: Names, logos, slogans and colour schemes are all registrable© 2012 Innovate Legal Services Limited
  • 11. Protecting your Brand Important considerations: • Trade marks are registered for specific goods and services best to protect brand not just for core activities but also for potential partner’s activities • Trade marks are national rights UK or international trade mark protection needed? • Costs of registration Professional help is advisable© 2012 Innovate Legal Services Limited
  • 12. Protecting your Brand IP Enforcement Once registered, use the (R) symbol to deter third parties from misusing. Act swiftly against infringers. If action is delayed, legal rights may be weakened or even lost altogether: “brand genericide” (e.g. ASPIRIN, ESCALATOR and ZIPPER).© 2012 Innovate Legal Services Limited
  • 13. Agreeing Terms of a Partnership Essential to record terms in writing. Advisable to involve lawyers in drafting agreement. Expect to negotiate. The terms of the agreement will depend on the parties’ commercial deal, but many terms are typical...© 2012 Innovate Legal Services Limited
  • 14. Standard terms (1) Subject matter: - Which rights are covered? - Important to specify which rights are in/out Scope: - Exclusive, non-exclusive or sole? - Field of use? - Form of use?© 2012 Innovate Legal Services Limited
  • 15. Standard licence terms (2) Ownership of newly created IP - who owns and who can use? Territory Other restrictions or obligations, e.g.: - Number of manufacturing sites / products allowed. - Any obligations on charity to provide assistance. - Quality /ethical standards© 2012 Innovate Legal Services Limited
  • 16. Standard licence terms (3) Duration and Termination - Time limited or perpetual? - Rights to renew: automatic or conditional? - Rights to terminate early for breach Payments - calculating payments - payment terms: e.g. guaranteed minimum payments?© 2012 Innovate Legal Services Limited
  • 17. Valuing IP If the proposed partnership involves royalty or other payments: - what is it reasonable to expect a corporate partner to pay for the use of the charity’s IP - how to justify the amounts? Usually agreed by negotiation between the charity and partner. If parties’ valuations differ, consider expert brand valuation.© 2012 Innovate Legal Services Limited
  • 18. Valuing IP IP valuation Uses - often used in litigation for calculating damages - used for many years in corporate accounting and taxation matters Usually carried out by specialist consultants Can be expensive - only likely to be justified for very significant brand partnerships By its nature, brand valuation is subjective.© 2012 Innovate Legal Services Limited
  • 19. Valuing IP 3 main brand valuation methods: • Cost approach - cost of creating or recreating the rights (may undervalue charity brands) • Market approach - estimate value by reference to comparable transactions (may be fewer comparables with charity brands) • Income approach - earnings approach - relief from royalty approach Other relevant factors: brand’s track record, strength of the brand etc.© 2012 Innovate Legal Services Limited
  • 20. Valuing IP There are pros and cons with each approach. The different approaches may well yield different results. The more information available to the valuer (e.g. comparable transactions), the more accurate the valuation is likely to be. Comparable transactions in the charity sector concerned? Ultimately, the right to use IP is only worth what a partner is prepared to pay.© 2012 Innovate Legal Services Limited
  • 21. Outline of a partnership Other important considerations: How to identify suitable potential partners How to locate the relevant individual within an organisation Questions to ask© 2012 Innovate Legal Services Limited
  • 22. Conclusions and some steps to take now Have an IP strategy: - list key brand names, logos, slogans and other intangible assets - ensure these are registered where feasible - tackle infringements Monitor/record comparable transactions for valuation purposes. Research carefully potential corporate partners. Ensure partnership terms are in writing. Take specialist advice on brand protection and drafting any agreements.© 2012 Innovate Legal Services Limited
  • 23. Case Study Facts: You are a children’s health charity. You receive an approach from Tesco to take part in a joint campaign. They will produce a “Barnaby Bear” teddy bear with your logo embroidered on the bear’s T-Shirt. For each bear sold, you will receive £1. Tesco want you to agree exclusivity for an initial 3 year term. Consider: 1) Brand registration/ownership issues 2) Payment terms 3) Is the 3 year term reasonable? 4) Questions to ask© 2012 Innovate Legal Services Limited
  • 24. Thank you for listening. Garry Mills Head of Trade Marks and Brands Innovate Legal 107 Fleet Street London EC4A 2AB Tel: +44(0)20 7936 9239 Fax: +44(0)20 7936 9111 Email: garrymills@innovatelegal.co.uk www.innovatelegal.co.uk© 2008 Innovate Legal Services Limited