Page 58 - IP-HANDBOOK-07-2018

V. Working with 3rd Parties
GENERAL REMARKS
Several players are involved in the development of our branding, packaging, advertising and sales material, in the development of our websites or as ambas- sadors of our brands. In the course of their work intellectual property is created and we need to ensure that our company has the rights to exploit the respective intellectual property rights.
Before engaging a third party appropriate agreements need to be in place. In the majority of the cases design rights and copyrights are the object of those agree- ments, but also trademarks and patents can be involved. It is much easier to negotiate the assignment of rights when the success of the commissioned work is not yet known (= before work has stated). When negotiating an agreement the aim should always be to get full assignment of the rights, which would also allow future adaptations and use on different means.
To avoid incurring an infringement of other parties’ rights request a warranty
from the contracted party that their work is original and not infringing third par- ties rights to avoid any liability of IP infringement for our company.
In sum, the agreement should contain:
• Assignment of all IP rights to Chocoladefabriken Lindt & Sprüngli AG ;
• Alternatively, assignment of full and unlimited rights to use and exploit the design/ copyrights (or other rights if the case) by all companies of the Lindt & Sprüngli Group;
• As a minimum, exclusivity in food and beverage sector if no full assignment of rights is possible or feasible.
• Non-disclosure or confidentiality agreements when discussing or working on projects with third parties.
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Key Take-Aways
• Don’t start working with third parties without having agreements in place
• Seek full assignment of rights if possible
• Get confirmation that contracted party is not using third parties rights or have the permission to use and modify them
Your IP Toolkit
• Checklist Working with 3rd Parties