Intellectual property (IP) is a blanket term under which falls a number of IP rights, these rights traditionally include copyright, designs, trade marks and patents. Usually these rights have some form of overlap, they work with each other to give the creator of the work protection against copying and, most importantly, value as IP is an asset which can be sold or licensed. Logos are a good example of how these IP rights come together. In this article, the MIA’s trusted intellectual property partner, Briffa, explain the steps you should take when creating a new logo…
Let’s start at the start, although I do actually have a GCSE in art, my artistic talent leaves a lot (I really mean a lot) to be desired. So if I want a nice looking logo I would approach a designer, or a freelance designer to create the logo.
When the designer who I commission creates the logo, he or she will create copyright – let’s call the designer Bob. Copyright recognises the “creative stamp” an author/Bob uses to create a work and good news: it arises automatically so no formal applications are required. The first owner of copyright will usually be the author (unless there exists an employee/employer relationship), this means that even though I commissioned Bob to create my logo Bob owns the copyright irrespective of payment. Luckily I am IP savvy and Bob and I have an agreement that transfers the copyright from him to me.
Step one: always ensure that when commissioning logos/designs there is an agreement in place to transfer the copyright.
Now I own the copyright, cheers Bob, in the logo. I want to look at another IP right that can assist me: trade marks. A trade mark is a badge of origin, it distinguishes goods/services from one entity to another. Unlike copyright, trade marks are registered rights meaning that a formal application is required to an intellectual property office, who after a period of time (and no objections) will send me a nice certificate once it becomes registered. This trade mark can then be periodically renewed for the rest of time (virtual pub quiz tip: Bass Beer owns UK trade mark number 1 (filed back on 01 January 1876)).
Step two: apply to register the logo as a trade mark to obtain registered rights for the logo.
Now comes the wild card: registered designs. A registered design will usually protect the look, feel and appearance of a product. However, logos are eligible for protection by way of a registered design. As the name suggests, a registered design right requites a formal application to an intellectual property office, much like trade marks. Although, watch out – to be valid a registered design needs to be “new” this means that if the logo has been disclosed for more than 12 months before the application date it will not be valid. Phew, design application filed and certificate issued.
Step three: get the design application filed within 12 months of the logo’s first disclosure.
So where are we, I have the logo, again thanks Bob, and: 1) copyright gives me the right to prevent third parties from copying it; 2) the trade mark gives me the right to prevent third parties from using an identical or similar mark to the logo in connection with certain goods and services; and 3) the registered design gives me the right to prevent third parties from using a design that is identical to the logo or doesn’t produce a different overall impression to the logo. These three IP rights now give me a broad scope of protection to prevent copying and each right will also add value to the business.
There are other IP rights that may be applicable here but what suits you may not suit me, at Briffa we know that no single business or project is the same and a tailored approach should always be taken.
Don’t forget that MIA members benefit from a free thirty minute consultation and special rates on all intellectual property and general commercial matters.
Briffa lawyers are experts in all aspects of contentious and non-contentious intellectual property law and practice. If you are starting a business and would like more information about ownership of IP or to know more about IP in general, please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our specialist IP lawyers.
Contact email@example.com for the details if you’d like someone to ease your legal headache!