When setting up a new company, developing a new brand or undergoing a brand refresh, one of the first things that many companies do is engage a graphic designer to design a new logo. Having paid the graphic designer for the logo many people believe that is enough to give them ownership of the logo. This is, however, incorrect.
The Copyright Act 1968 (Cth) defines several categories of material that are automatically eligible for copyright protection upon creation. One of these categories is “artistic works” that includes amongst other things drawings, diagrams, paintings, photographs, sculpture and logos. Logos do not need to be complex to be considered artistic works and even relatively simple logos are automatically granted copyright protection.
Under copyright law, in the absence of any written agreement, the creator of the logo (in most cases the graphic designer) will own the copyright in the logo. As the owner this gives them certain exclusive rights including the right to:
- copy or reproduce the logo (including digital and printed copies in brochures, marketing material and even on products and packaging);
- publish the logo; and
- communicate the logo to the public (including communicating it electronically by placing it on a website or including it in an email).
This means that even though you may have paid for the logo to be created you won’t necessarily own the copyright to it and may not be able to use it without infringing the designer’s copyright. To effectively transfer copyright in the logo you need to have a written agreement assigning the copyright to you.
In a recent trade mark opposition case [2017] ATMO 159, Just Foods Australia Pty Ltd opposed a trade mark application by Just Foods Limited in relation to trade mark application 1753914 for the logo.
In addition to being protected by copyright, logos can also be protected by way of a trade mark registration (although trade mark rights are not automatic and must be applied for). If copyright in the logo has not been effectively transferred, then this could impact any trade mark application filed to protect the logo.
The applicant and opponent had done business together but that relationship had ended. Just Foods Limited subsequently applied for a trade mark application for the logo which was accepted for registration by IP Australia. Just Foods Australia Pty Ltd opposed registration of the trade mark on a number of grounds, the most crucial of which was Section 42(b) of the Trade Marks Act 1995 that states:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(b) its use would be contrary to law.
Just Foods Australia Pty Ltd alleged that if the trade mark was registered, Just Foods Limited would breach sections 36, 37 and 38 of the Copyright Act 1968 meaning the trade mark use would be contrary to law as defined in S42(b) of the Trade Marks Act 1995.
Just Foods Australia Pty Ltd was able to show evidence (being a written assignment) that the graphic designer who designed the logo had assigned copyright in the logo to them. On that basis, the use of the logo by Just Foods Limited would be considered copyright infringement and contrary to law. As such the trade marks office refused to register the trade mark. The rightful owner, Just Foods Australia Pty Ltd is now free to file its own application for registration of the logo and prevent their former business partner from using the Just Foods brand in Australia.
This case highlights the important of ensuring you own copyright in your logo and perfecting the chain of title prior to filing a trade mark application.
The team of trade mark attorneys at Baxter IP are experts in this field and have registered more than a 1,000 trade marks for clients in Australia and overseas. Don’t hesitate to contact us if you need any assistance in ensuring copyright in your logo is correctly transferred or would like to discuss any aspect of protecting your brand.