Logo: is it a trade mark, is it a copyright?

Logos are one of the most popular and valuable types of trade marks obtained by businesses. In many cases, businesses outsource creation of brand identity and logos to freelance designers or design/brand agencies, oftentimes without a written agreement in place or with a simple agreement/purchase orders that are silent on the ownership of intellectual property rights. They then register a trade mark in the business’ name and believe that all intellectual property rights belong to the business – as they paid for the creation of the logo and registration of the trade mark.

A logo, however, is often an artistic work protected by copyright – which is a separate intellectual property right independent of trade mark rights. A starting point is that copyright belongs to the person (the author) who creates the work in question (in this case, a logo); if the author is employed by a design agency, a starting point is that the author’s employer is the owner of copyright (subject to any provisions in the employment contract to the contrary).

It is a common misconception that ownership of copyright is transferred once the fees for the design work are paid. In fact, for the copyright ownership to pass there has to be an explicit provision in a written agreement to this effect. If there is no such provision, then after the fees are paid, the business will only receive a limited licence to use the logo, but not the full ownership of the same.

There have been a number of cases where the owner of copyright in the logo contested a trade mark application for the logo filed by the businesses that commissioned it, with different outcomes which depended on the facts of each case. In any event, a time consuming and costly contentious proceedings ensued – which could have been avoided by having a proper written agreement in the first place.

We therefore recommend having an agreement with a freelance designer/design agency professionally drafted to ensure you own copyright in the deliverables (the logo and any other works created by the designer) and to avoid potential costly disputes in the future.

This can seem understandably overwhelming. However, we are here for you to help navigate the world of intellectual property – just email info@briffa.com to book a free consultation meeting.

Written by Anastasia Troshkova – Associate