"Brand collaboration" is generally understood as using two or more trademarks on a single product, each owned by different entities, and pointing to different origins. Essentially, it's a legal and marketing strategy that utilizes cross-licensing of trademarks between different companies to create new product brands, attract consumer interest, and boost sales.
Although other forms of intellectual property like copyrights, patents, and personality rights may also be involved in brand collaboration, this article focuses solely on trademarks. Brand collaborations require careful consideration of key trademark licensing terms; otherwise, they may harm one or more parties involved. Potential adverse outcomes include market confusion, reputational damage due to flaws or reputational issues with the partner, product liability lawsuits due to defects in the partner's products, and dilution or loss of trademark rights due to excessive exposure or improper trademark use resulting from brand collaboration activities. Therefore, a proactive and cautious approach is recommended when initiating brand collaboration activities. This article provides recommendations regarding trademark law issues and risk prevention related to brand collaboration:
1. Confirm Ownership and Validity of Trademark Rights: Enterprises must investigate the existence of relevant trademark rights holders and verify their validity to avoid infringing on others' trademark rights. For instance, in August 2020, Semir Clothing announced a collaboration with the Shaolin Kung Fu series. However, on September 1, 2020, the Shaolin Temple's official entity in Henan province stated that Semir had used "Shaolin Kung Fu" on clothing labels and product names without authorization, infringing on the Shaolin Temple's intellectual property rights. This case underscores the importance of confirming ownership and validity of trademark rights before brand collaboration.
2. Verify Licensor's Identity: Apart from confirming the trademark rights holder, it's crucial to verify the licensor's identity to avoid partnering with the wrong entity. For example, in December 2018, Samsung announced a collaboration with the trendy brand "Supreme" for its new product A8s. However, it was later revealed that the "Supreme" brand they collaborated with was counterfeit "Supreme Italia," not the well-known "Supreme" streetwear brand. This highlights the importance of verifying the licensor's identity before collaboration, especially with indirect trademark rights holders.
3. Confirm Licensor's Trademark Rights on Collaborative Products: Trademark rights are limited to approved goods and services. Collaborative parties must ensure that trademark usage aligns with approved categories to avoid infringement risks.
4. Specify Authorization Form for Collaborative Trademarks: Trademark use authorization forms include exclusive, exclusive, and ordinary licenses. Both parties need to specify the authorization form in the license agreement to protect their interests.
5. Standardize Authorized Trademark Use: Trademark use must be limited to approved categories. Standardizing trademark use prevents legal risks associated with non-standard use.
6. Enforce Licensor's Supervisory Duties: Trademark registrants must supervise licensee product quality. Failure to do so may result in joint liability in case of trademark infringement or product liability lawsuits.
7. Complete Authorization Renewal or Termination Procedures: Parties should complete renewal procedures or handle termination cleanup according to the collaboration agreement.
In summary, brand collaboration involves various intellectual property risks and legal issues. Therefore, it's crucial to prioritize legal risk management and take appropriate preventive measures for successful collaborative partnerships. Both business and legal preparations are essential for achieving mutually beneficial collaborations.
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