Brand logos can be protected by copyright, as artistic works, and registered as trade marks.
Clients often ask us whether it is worth applying to register their logo as a trade mark, if it is already protected by copyright.
The answer to this question is that if the logo is used, or going to be used, it is sensible to also register the logo as a trade mark. Some of the reasons for this include:
· Subsistence and ownership of copyright: in order to demonstrate copyright exists, the copyright holder has to show that the work is protected by copyright law and that it is the owner of the copyright subsisting in that work. This is not always straightforward. As a registered trade mark is a registered right with a registration certificate, demonstrating subsistence and ownership is generally not an issue with trade marks, as this is proved by displaying the registration certificate.
· Copyright can only prevent copying: the rights conferred by a trade mark are broader than those conferred by copyright. In order to prove copyright infringement, there has to be copying of the whole or a substantial part of the copyright work. However in order to prove trade mark infringement, the infringing logo only needs to be confusingly similar (which includes assessing visual, aural and conceptual similarities) to the registered trade mark which is a lower threshold.
· Certificates are ‘king’: there are no copyright registration requirements in the UK or EU. However, trade marks are registered rights, and upon registration, a certificate proving the status of the trade mark is issued. This means a tangible document can be shown to third parties evidencing the existence of the trade mark. This can of course come in handy at trade shows where you may need to quickly demonstrate evidence that you own the IP subsisting in a brand to stop someone else at the show infringing your brand. It is also useful when a due-diligence exercise is being undertaken to sell a brand, for example, as the registration certificate will acknowledge existence of the brand and your ownership.
· Duration: copyright generally lasts for the duration of the authors life plus a further 70 years from the end of the calendar year the author dies. Trade marks however, subject to use requirements, the mark not becoming generic and renewal fees being paid, can last forever, which is a pretty nice return on an initial investment as low £170 for a UK trade mark application.
A good example of the broader protection given to a registered trade mark compared to copyright is demonstrated by a recent decision of the European Intellectual Property Office.
Registered Trade mark
The Non-Registered Trade Mark Application
The Registered Trade Mark was registered as a trade mark for clothing in class 25. The Non-Registered Trade Mark Application was a trade mark application for clothing in class 25 as well.
The owners of the Registered Trade Mark opposed the application for the Non-Registered Trade Mark on the basis that the logo was confusingly similar to the Registered Trade Mark and the EU IPO agreed. Key to this finding was the fact the marks were visually similar and conceptually identical.
It would be a lot more difficult to rely on copyright in this example. Not only would the owners of the logo need to demonstrate copyright subsists in the logo and that they own the copyright but that there was in fact copying. Copying is not always easy to prove and can often come down to which sides’ version of events the court prefers.
It is also worth noting that copyright does not protect ideas but only their expression (i.e. the way the works are represented). Applying that maxim to this case, a court is unlikely to have found copyright infringement as the idea appears to be the same (a whale as logo) but the expression is very different. One of the key factors in the EUIPO decision was the conceptual identity (the concept of a whale), which would not assist in a copyright decision as it is akin to an idea.
Written by Ramsay Monime, Solicitor