Written by Jennifer Tutty (Principal) and Alyce Evans
Do you run a business?
If the answer is yes, then you would well know that logo assets form an integral and valuable part of your business’ IP portfolio.
Due to the importance logo assets have to your business, we’ve put together a list of 9 things you really need to know about protecting your logo assets.
Remember, coming up with a strategy should always start prior to the design phase of a logo. Good luck – you got this!
1. You should register your logo as a trade mark
The best way to protect your logo is with a registered trade mark. Under the Trade Marks Act 1995 (Cth) (Trade Marks Act), the owners of registered trade marks have the exclusive right to use those trade marks.
When you register a trade mark, you select the goods or services you want it to protect.
You can then rely on your trade mark registration to stop others using ‘substantially identical’ or ‘deceptively similar’ trade marks, for goods and services in ‘classes’ that are the same or similar to the ones you have registered for.
If your logo is registered as a trade mark and someone:
- Removes your logo (e.g. from the packaging of your product, or marketing materials); or
- Applies your logo to their own goods or services without your permission,
they could be charged with a criminal offence and jailed for 5 years. This is another reason why it’s good to have your logo registered as a trade mark.
2. Before you design a logo, make sure it’s one you can legally trade mark!
Before you apply for a trade mark, you need to create a logo. At this early stage, you should be aiming to create a logo that you can protect through trade mark registration (and copyright if possible – more on that below!).
If you’re using licensed images or fonts in your trade mark, check the relevant licensing terms and conditions to make sure you can legally register that logo as a trade mark.
The same principle applies if you (or whoever is creating your logo) use a platform, program or technology to create the logo.
We recommend using originally designed typefaces or images in your logo to ensure that you can legally own and register it as a trade mark.
It is also beneficial to engage a trade mark lawyer to conduct a Brand Check, to determine:
– Whether there are other trade marks already registered which may block your logo; or
– Whether the logo trade mark application might be rejected by IP Australia for another reason.
3. Unregistered logos might have legal protection too
If your logo is unregistered, don’t distress. You may have acquired a reputation in that logo, such that you can stop people using the same or similar logos.
However, protecting an unregistered logo is usually more difficult than protecting a registered logo.
4: Understand how you can use trade mark symbols
You can put the ™ symbol next to your logo even if it’s not registered as a trade mark. This shows the public that this logo is being used as a trade mark for a business (your business!).
You can only put the ® symbol next to your logo once it’s registered. Make sure not to do so beforehand as it’s a criminal offence do so without a registration!
5. You must file a trade mark application in the name of the correct owner
Make sure you file your logo trade mark application in the right name.
The person who applies for the trade mark must claim to be the owner of the trade mark and either:
– Use or intend to use the trade mark; or
– Authorise or intend to authorise another person to use the trade mark; or
– Intend to assign it to a body corporate that is about to be formed with a view that the body corporate will use the trade mark.
Your trade mark registration might be invalid if you file in the incorrect applicant’s name.
We recommend speaking to a trade mark lawyer before filing an application to discuss applicable trade mark classes and ensure you file in the correct name.
6. Copyright law can protect logos that are ‘artistic works’
The Copyright Act 1968 (Cth) (Copyright Act) protects ‘artistic works’ which are the original creation of a human author. Artistic works include things like graphic designs and drawings.
If the logo:
– Is original;
– Created by a human author; and
– Meets the definition of an “artistic work” under the Copyright Act,
Then the person who created the logo will own the copyright in it. If you own the copyright in your logo and someone reproduces your logo (or a substantial part of it), you can claim that the copyright infringement against that person/business.
7. Copyright law can protect word-only logos, fonts and typefaces in some instances
The Copyright Act also protects ‘literary works’. Generally a brand name won’t be classified as a ‘literary work’, therefore the name itself won’t be protected by copyright. (Note: This is where a trade marked brand name comes in handy!)
For some businesses, their logo is a stylised version of the words forming their brand name. If your logo is a stylised version of your brand name, don’t despair. Original fonts and typefaces can be protected by copyright.
In fact, some of the most famous fonts are protected by copyright. For example, the copyright in Times New Roman, Calibri and Arial are owned by Monotype Imaging Holdings Inc.
However, remember that to be protected by copyright, the font or typeface must be ‘original’. If you, or your graphic designer, use an open-source typeface for the letters or words in your logo (rather than an original typeface), it’s likely you won’t own the copyright in the resulting logo. This is because the owner of the typeface will retain copyright.
There may be other usage restrictions on the use of certain fonts, so read the fine print or make sure your designer confirms the rights you need in writing.
8. If someone else designs your logo, make sure they transfer the copyright to you
If you commission someone (such as a graphic designer) to create a logo for you, the initial position is that they own the copyright in that logo. Therefore, it’s crucial to make sure they transfer that intellectual property to you.
As part of the designer’s terms of engagement, we recommend they sign a document transferring the copyright in any logos created to you, your company, or other legal structure that you want to own your business IP.
Don’t wait until later to ask your graphic designer to transfer the copyright, as they may charge you additional ‘buy-out’ fees.
9. Take care when using an online platform, program or other technology to design your logo
Logos created via AI tools are often not protected by copyright. This is because (for now at least) the Copyright Act will only protect works that are created by a human author. Therefore if AI is seen as the creator of the logo, it won’t be protected by copyright.
We note that you can use digital ‘tools’ and programs to create logos and retain the copyright in these, much as an artist might use a paintbrush as a tool to create a painting.
However, we always recommend reading the fine print about whether you own the IP in any works created using those programs.
If you create your logo using a design platform (such as Canva) or typefaces or images owned by someone else, proceed with caution, as you may not own the copyright in the resulting logo. Again, always read the terms and conditions.
Written by Jennifer Tutty (Principal) and Alyce Evans.
Published 30 March 2023
Photo by Aleks Dorohovich on Unsplash
Further Information:
Looking to protect your business’ logo? Dealing with a copycat? If you’re looking for legal assistance regarding your logo (or any other brand assets), please contact us through our online form or via email at hello@studiolegal.com.au.
DISCLAIMER:
The information in this article is of a general nature. It does not constitute formal legal advice, and should not be relied on as such. Please see the full disclaimer in our website terms. Please contact Studio Legal if you are seeking advice about a specific legal matter.