What’s in a name

Written by Samuel O’Toole | December 22, 2022


As the year comes to an end, many trade mark applications will have been filed and registered in 2022. As an example, the EU Intellectual Property Office generally registers 135,000 trade marks a year – this number is high, especially when one takes into account the fact that this number does not include UK or national marks registered with a regional intellectual property office.

But what is in a name, surely once a brand has its trade mark registered they can enjoy the festive activities? I am sorry to sound like Santa tumbling through the chimney with a bag of charcoal but, the trade mark is one piece of the intellectual property jigsaw.

Lets talk trade marks, most often the first recommended step for any brand will be to protect its brand name as a word only trade mark. The benefit of a word only trade mark is exactly that: it protects only the word and no other claim to colour or stylisation is made. It follows that a next sensible step is to protect the brand’s logo, a logo trade mark makes a claim to the wonderful stylisation and colour that is not found in a word only trade mark.

When we then come onto the logos that, no doubt, brand owners will have spent much time and energy on, the question needs to be asked: who designed the logo and does the business own the copyright for the logo. Copyright will protect artistic works such as photographs, drawings and artworks. The general rule is that where there is an employee/employer relationship and the logo was designed by an employee in the course of employment, the copyright to the logo will be owned by the employer. Although, if the logo was designed by a freelancer or contractor, the general rule is that the copyright to the logo will remain with the freelancer rather than the person who commissioned the logo. This can often leave a business in a prickly situation where the freelancer owns the copyright to the business’s logo – not a good look if you ask any IP lawyer.

But once I have the word trade mark, the logo trade mark, own the copyright to the logo is there anything further that I need to consider to avoid getting charcoal for Christmas – well, let me tell you about the world of registered design rights. Registered design rights work in a similar way to trade marks in that an application needs to be made to an intellectual property office, who (all being well) will then issue a shiny registration certificate. Registered design rights become registered in 2-3 weeks (whereas trade marks 2.5-3.5 months) and they protect the outer appearance of a 2D or 3D object, logo or design. Registered designs are also very cost effective and they provide protection over the work in a different way to trade marks or copyright. A good belts and braces approach is always to register your logo as a registered design to gain an additional benefit.

So what is in a name, well we have trade mark rights, copyright and design rights and all are invaluable tools in preventing copying and are important assets of the business. As the festive period approaches why not treat your business to something special and treat it to the intellectual property rights it deserves.

Written by Sam O’Toole – Associate

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