JUNE 2010

THE flying kangaroo, the hounds tooth pattern and the golden arches are instantly recognisable logos.

They have also been protected by their respective owners Qantas, David Jones and McDonalds.

These graphical devices operate as valuable trade marks in their own right because they convey a connection to the organisation without using a name or other words.

For this reason many companies register their logos as trade marks, in addition to registering trading names or product names as ‘word’ trade marks. For example, the Australia Post ‘P’ logo is registered as a trade mark, as well as the words ‘Australia Post’

Katrina Chambers is a special counsel at Flower and Hart Lawyers specialising in trademark and intellectual property (IP).

Chambers says registering a logo as a trade mark provides protection throughout Australia from use of a substantially identical logo, and also deceptively similar logos having regard to consumers’ imperfect recollections. But she stresses that intellectual property protection for logos does not rest solely with trade mark registration.

“A logo consisting of a sufficiently original graphical element can also attract copyright protection. Copyright protection is automatic, and there is no need or ability to register for copyright in Australia,” explains Chambers.

“Problems can arise where a company engages an external contractor, such as a graphic artist, to develop a logo. In such cases it is very common for companies to assume that they own the copyright in the logo, but this is often not the case, even though the company has paid for the work.”

As a broad rule of thumb, unless there is a contract that states otherwise, work undertaken by a contracted graphic artist, means the contractor will own the IP. The company will generally only have an implied licence to use the work.

Chambers says this is different to the position where the work is undertaken by an employee in the course of their employment, where the employer usually owns the copyright.

“Given that registration of a logo as a trade mark is no defence to a claim of copyright infringement, it is important for companies to consider copyright ownership at the time of engaging contractors to create logos,” she says.

“The owner of the copyright in a logo has the right to commence legal proceedings to prevent the use of that logo by third parties without authorisation, and to recover damages or an account of profits arising from such unauthorised use.”

Chambers cites the ABC Learning Centre’s purple teddy bear and blocks logo as an example.

The author of the logo alleges he was a contractor at the time it was created and that accordingly ABC’s receivers had no right to sell the logo, notwithstanding that it is registered as a trade mark.

What must you do to protect your company logo?

• When engaging a third party as a contractor, use a written contract that is signed by the contractor, and provides for the company to own all copyright and other intellectual property rights in the relevant works. Ideally the contract would also include a consent to infringement of the contractor’s ‘moral rights’, including the right of attribution and the right to maintain the ‘integrity’ of the work.

• If the company has had valuable logos developed by contractors in the past, consider whether the contractor might now sign a deed of assignment of the copyright if asked. Of course the contractor may ask for more money to do this, or you may have trouble locating or identifying the relevant person. This is why it is best to address copyright ownership from the outset.

• In addition to securing copyright ownership, consider applying to register the logo as a trade mark. Think about whether the company would consider it a problem if a competitor used a similar logo even if they traded using a different name. Note also that trade mark registration is affected on a country by country basis. Accordingly it is important to consider your organisation’s current market places, as well as likely future markets.

• Remember also that even if you do not wish to register a logo as a trade mark, it would be prudent to have searches undertaken to check that it is not substantially identical or deceptively similar to any existing registered logos. Even though a logo may not be an exact copy of a copyright protected work, it can still infringe a registered trade mark if it is deceptively similar.

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