Cross-brand collaboration - should I register?

The trend for unusual brand collaborations across sectors is continuing, with the announcement of a partnership between fashion brand PrettyLittleThing and Krispy Kreme doughnuts. But is it really a move that no-one saw coming? Not quite - the trade mark PRETTYLITTLETHING was registered for a wide range of food and drink back in 2019.

Brand owners planning to partner with a business outside their core sector should, as a minimum, be checking the trade marks register for any conflicting rights before they commit themselves. Should you apply to register your trade mark in the new classes of goods? It depends. 

Cross-sector collaborations are often short-lived - the PrettyLittleThing doughnuts are limited edition and will only be on sale until mid-May. If your venture is truly a one-off then it may not be worth applying to register for the new goods, because the application process will take several weeks at least, and the ten-year protection for the registered mark would ultimately not be required. A registered trade mark loses its validity if it goes unused for more than five years.

On the other hand if the collaboration will be repeated regularly, or you plan to pursue more opportunities in the same new sector, then registering up front is a sensible move as it gives you an IP right which you can license and monetise. Whilst co-branded doughnuts may have taken many of us by surprise, the statutory rights are already in place for similar ventures such as PrettyLittleThing popcorn or soft drinks.

It's a wise move to discuss your brand collaboration plans and dreams with a chartered trade mark attorney. Our Marks & Clerk retail and food/drink teams are always happy to advise on strategy.