First published in Supermarket News March 2025 edition – written by Monique Balvert-O’Connor
Ben Cain’s journey down supermarket isles enables him to indulge his interest in the likes of product labels, logos and packaging design.
The Tauranga man, who is a partner with intellectual property legal firm James and Wells, describes himself as “a brand man on a mission”. His quest involves ensuring that those proposing to launch new products on the market are properly armed with trade mark and registration information.
Since the start of last year, Ben has amplified his focus on having meaningful conversations with design agencies, marketers and FMCG organisations like the NZ Food Innovation Network and NZ Beverage Council. The aim is to help with awareness around different types of IP assets, in particular ‘non-traditional’ trade marks such as shapes and colours and design registrations. It’s vital, he says, that people are aware of both the types of IP assets and the need to prioritise intellectual property (IP) early in their new product development journey.
“In my experience, there can be a tendency among start-ups to focus on ‘let’s get that brand, let’s get the label, let’s spend capital on stock and promotion, let’s get revenue’. All of those things are important, of course, but so, too, are IP rights which start-ups might consider are a medium to long-term priority rather than an immediate one, or are too expensive to secure. Start-ups might also miss out on securing IP assets because they’re just not aware of what’s obtainable. But IP thought should be prioritised early on,” he advises, adding that this stance is endorsed by the NZ Food Innovation Network in its Jumpstart resources, for example.
“There’s a greater need, I perceive, for clients and agencies, with the support of organisations like NZ Food Innovation Network and NZ Beverage Council, to think more about registerable IP assets like non-traditional trade marks and design registrations at the start rather than at the end, or near the end, of the creative process. Consideration of such assets at the start may not only alter the course a design project takes, it may also unlock significant value for both the agency and client down the track. By unleashing design, you can unlock IP assets”.
A key part of Ben’s work goal is to have robust conversations with brand and packaging design agencies. He’s keen for businesses, and those working on their product designs, to “know what they can do, what they could do, and what they should do.”
There’s also a need, he says, to break down some barriers as he’s found creative agencies and lawyers are not necessarily great at communicating with each other.
“As a collective I believe we can do better. Lawyers are great at talking to clients, agencies are great at talking to clients, but lawyers and agencies are not great at talking to each other. There needs to be a conversation that goes around and works to benefit all.”
Ben’s a good man for this job. Before practicing law, he was a brand man for 15 years, managing product design, marketing and branding projects for a diverse range of international and domestic brands.
He backs up his IP convictions with various scenarios that involve the need to think ahead. From a Food and Beverage perspective, he says, those launching product shouldn’t just think about what they can afford now and where they want to sell in the short term, but rather what they are likely to afford – and where they could possibly be – in the future so the scope of their IP protection is appropriate.
For example, he says, the goal may not be to solely sell a in NZ and Australian markets. A key market in the future could be the USA, so there’s a need right at the start to check whether the selected trade mark can be used there, too.
“If you haven’t thought ahead you may need a dual brand strategy or a total re-brand which is costly. Think wide from the start.”
Another scenario involves the possible desire to sell-up. A potential investor is likely to ask what IP protection exists. If the answer is not satisfactory the response may be “why spend all this money when there’s no barrier to competition”. IP adds value to a business. The sale value of a business is invariably greater if it has registered IP assets.
Ben also speaks of the advantages of investing in product identification. Instead of putting a newly developed beverage, for example, in a standard bottle, think about paying extra for a mould for a specific bottle. Tuatara beer, Quick Brown Fox and Coca Cola are examples he cites of companies that have done so, and their product stands out on the shelf – recognisable even without their label and bottle colouring.
“If you can afford the tooling now (for a specific mould), great; if not get a design developed by a product agency and get that registered. Then you are buying yourself an ambition to use it in the future. Think of your goal. You don’t have to use it straight away. If you decide to use the design, it is there. You could always sell it overseas or license it to gain a passive income stream. Broaden your scope through horizonal, strategic thought.”
Registering a design early in the piece is also important, he says, because as soon as a design becomes public, there’s no going back to register it as a design. While there’s the potential to go back and register it as a trade mark, too bad if, in the interim, someone in an overseas market has got in first, he says.
For businesses for whom budget is a barrier to getting registered protection, Ben advises talking to an IP lawyer to devise a plan that is as budget friendly as possible. Just don’t forgo having that conversation right at the start, he says. It is a crucial part of laying solid business foundations.
James and Wells is a NZ Beverage Council member.
