Is your Brand protected here and overseas?
Do you own your logo? Trade marking your brand.
Many businesses outsource a designer or design company to create a logo for them, although you paid other people to create YOUR logo, who actually owns it? In Australia, logos are considered Intellectual Property (IP) and are protected by copyright as artistic works. Essentially, logos are owned by the creator of the logo unless there has been a transfer of ownership in place OR otherwise clearly stated in the contract agreed upon by the parties involved.
If this agreement does not exist, it is safe to assume that the logo belongs to the creator, even though you hired them to make the logo for your business. In instances where the designer was under employment of another company, their company will retain the copyright to the artwork, rather than the designer themselves. However, if you have hired a contractor to create it, then they usually will have sole ownership of it unless an alternative was stated and agreed upon prior to entering the agreement. If the contract between you and the designer is silent on the issue of copyright, then it is safe to assume that the creator retains the copyright over the work.
For example, the famous footwear brand, Doc Martins, ran into some trouble when the Australian company (Raben Footwear Pty Limited) approached the designer who originally created the Doc Martens’ logo, intending to buy the logo off them. The designer then assigned the copyright to Raben, and was sued by the owners of Doc Martins. Although this was a UK case, it is still relevant to the Australian companies, so it is probably a good idea to include in the contract that the transfer of copyright ownership goes into effect once the fee is paid. In addition, it’s important to note that even with the transfer of copyright, the logos may not be able to be altered and your usage of it may be restricted depending on the agreement you have with the artist.
Making sure that you have ownership to the logo is also important step before it as a trade mark as this registration may be opposed if it is found that you do not have ownership of it as stipulated by the Trade Marks Act 1995 (Cth). Once you’ve assured that you own the copyright then it is time to register your logo as a trade mark in order to protect your brand. You will need to make sure your logo does not violate any existing trade marks which could land you in hot waters. Registering a trade mark prevents future usage of something similar and strengthens your businesses brand.
INTERNATIONAL BRAND PROTECTION
If your business is trading in an international market, or you’d like to expand to international markets, you need to be aware that every country has different guidelines in relation to IP ownership and trade marks. For instance, China is an attractive market for Australian businesses. China passed new trade mark law in 2014 which strengthened the legal protection of trade marks in China and the registration process in line with international standards. Recently, a Chinese court ruled in favour of the U.S. shoe company “New Balance”. The business was granted $1.5 million due to the infringement by three Chinese companies. This was the largest amount awarded to a foreign company so far.
In Australia there is recognition for prior use of a trade mark logo or name, even if you don’t go through the trade marking process. In China, this is not the case. China operates on the first to file system rather than the first to use. For example, when Penfolds wines attempted to register in China, despite their established trading history, they found a squatter on their name and a lengthy legal battle has ensued. Penfolds, faced with paying a substantial amount to buy back the name or register their brand under another name, embarked on a legal remedy. In early 2017 Penfolds were finally able to make their case and the Beijing High People’s court ruled that the squatter had failed to make genuine use of the name.
China now has an arrangement with Australia whereby they will acknowledge your Australian date of registration, as long as you apply to China for registration within 6 months of your Australian date of registration. However, this is only if you apply using the Madrid Protocol. Otherwise you can file directly to China, though in this case, the official filing date will be the date they receive the application.
It’s important to remember that any unauthorised use of a logo or name, even if it is yours but registered by someone else may infringe a registered Trade Mark.