If you have not noticed the resurgence of Barbie in the run up to the new film hitting cinemas last Friday, where have you been? From viral social media campaigns to countless, pink-themed brand collaborations, Barbie is no longer just a toy for the young.
The entertainment/character sector takes the largest "slice of the cake" when it comes to the global licensing industry. Mattel Inc. has invested heavily in their intellectual property portfolio, and they are clearly not afraid to stretch their brand further by strategic tie ups.
Mattel Inc.'s recent brand collaborations using Barbie demonstrates the ability to engage with consumers in a nostalgic and unique way, by licensing the Barbie brand to variety of different brands outside of their usual market sector of toys. From haute couture, The House of Chanel announced a collaboration with Barbie; to High Street, fashion giant Zara has recently launched a "Zara x Barbie" collection; to shoes, brand Superga has launched pink and white Barbie-themed trainers; fast food, Burger King has launched a Burger in Brazil with a smoky pink sauce; and even games, UNO now has a Barbie version of the classic cards, no potential for collaboration is unexploited.
So, how do these collaborations work in practice?
Licensing your trade mark
When a trade mark is licensed, the owner, for instance, Mattel Inc, typically grants a third party, e.g. Zara, ("the licensee") the right to use the trade mark based on mutually-agreed terms. Often the right to use the trade mark is in exchange for payment, referred to as royalties, allowing the owner to generate revenue through other channels which would not normally purchase from them.
Most licences are non-exclusive, meaning that the trade mark owner/licensor can licence the rights to other parties, which can often be a point of contention during negotiations. Other types of licences include an exclusive licence, whereby the licensee is the only entity permitted to use the mark and a sole licence where both the licensor and licensee produce the products or provides the services bearing the trade mark.
The trade mark owner will also want to clearly define what use of the trade mark is authorised and the manner in which the trade mark must be used, even annexing Brand Guidelines (an extensive set of rules as to how the trade mark must be used or not used for the period of the licence) to ensure the trade mark is being used in the way the owner intends and to protect the reputation and goodwill established in that trade mark.
It goes without saying, licence agreements need not be indefinite; trade mark owners can make them for a fixed term. Trade mark owners will want to ensure that the goodwill i.e. the attractive force of the trade mark reverts to them so that the owner is ultimately receiving the benefit of any continued marketing of the brand.
In the UK, trade mark licences should be recorded against the registration at the UK Intellectual Property Office within six months of grant. The licensee can also initiate infringement proceedings in its own name if the trade mark owner fails to do so, unless the agreement states otherwise.
Trade mark licence value
The reputation and goodwill that a trade mark has generated in the marketplace will determine how valuable the trade mark is, and thereby the royalty rate which can be commanded.
One benefit of licensing a trade mark is that the licensee should be able to provide evidence of use of the mark if the registration comes under threat for non-use. In the UK, trade mark registrations become vulnerable to cancellation after five years of registration if they have not been put to genuine use, and so if the trade mark has been licenced to another party to use, it reduces the risk of the registration being cancelled for non-use as the licensee can provide evidence of use when it comes to proceedings.
In an increasingly global landscape where social media platforms are prevalent, brands are seeking to leverage their IP through collaborations with other brands in order to reach a wider audience and thereby engage different consumers to their traditional target market. This can be an exciting and rewarding way to grow revenue.
The breadth of companies willing to collaborate with Barbie reflects Barbie's popularity which must be in no small part down to Mattel's investment in the brand over her lifetime. However, this is just one example of brand collaboration, there are plenty more and the next could involve your brand.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
