Why should I pay for a trade mark when I can get copyright for free?

Tuesday 21 March, 2017

I am often asked by clients seeking trade mark protection whether they can avoid the cost by simply relying on copyright to protect their valuable brand names and logos. Copyright is a very useful form of IP and certainly has its uses.

 

For instance, copyright covers a broad range of subject matter (e.g. from literary, artistic and musical works, to films and radio broadcasts). Further copyright protection is usually automatic (i.e. it is free and does not need to be registered) and it generally offers a degree of international protection for a lengthy period of time.

Conversely, trade marks usually must be registered separately in each country of interest, and must also be renewed in ten year blocks. Trade mark protection can also be revoked if a trade mark is not used, whereas there is no ‘use it or lose it’ requirement for copyright owners.

Further, to a certain extent, copyright and trade mark rights overlap. For example, a registered trade mark may also have some copyright protection. Nevertheless, relying only on copyright to protect brand names and brand logos is inherently dangerous.

From a brand protection perspective, registered trade marks generally trump copyright in most ways that commercially matter. The superficial advantages of copyright protection (i.e. no requirement for registration and automatic international protection) are also not particularly useful in the context of brand names or brand logos, for the reasons given below.

Cullens Article 1

1. Brand names will not usually qualify for copyright protection
Generally speaking, brands are usually words (i.e. brand names) or graphics (brand logos). Many brand logos contain a mixture of word and graphical elements.

Trade mark law specifically allows for protection of brand names and logos (and also brands in other forms).

However, copyright law does not specifically protect brand names and logos. A brand name or logo will only be protected by copyright if it falls within certain limited categories under copyright law.

For example, in Australia, copyright law allows the protection of words and graphics as literary and artistic works.

However, brand names usually consist of three words or less. Often, a combination of a few words will not be sufficient to be considered a ‘literary work’ under copyright law. Neither will a combination of words be considered an artistic work. Therefore, copyright offers no protection for the majority of brand names.

Brand logos fare better. This is because they will often fall within the broad definition of an artistic work, and can qualify for copyright protection. However, copyright protection for brand logos is also far from perfect, because…

2. Brand logos only have weak copyright protection
A registered trade mark is a very powerful thing. It can permit the owner to prevent another person from using an identical or confusingly similar trade mark, for the same or similar goods or services.

In many countries, a trade mark also has defensive value. This is because a registered trade mark can often be used as a shield against allegations of trade mark infringement made by other trade mark owners.

Conversely, enforceable copyright in a brand logo is very limited. This is because, to infringe copyright, the infringer must usually be shown to have directly copied the brand logo, or copied a substantial part of it. If the allegedly infringing logo is merely thematically similar to the brand logo, or was created completely independently (i.e. without knowledge of the brand logo), proving copyright infringement can be very difficult.

Similarly, copyright usually provides no shield to use against trade mark owners who bring actions for trade mark infringement against the copyright owner. This means that a copyright owner can face significant liability for trade mark infringement (including criminal penalties in some countries) for using a brand logo in which they own the copyright, but is still too close to a registered trade mark. This can occur even where the copyright owner created their logo before the trade mark owner.

3. Registration of brand names and logos is a good thing
The rationale behind not requiring registration of copyright is in part due to the sheer volume of new creative material that is brought into existence every day. Requiring that copyright be registered would be administratively impossible, and would deny rights to many people.

Conversely, the number of new trade marks used each day is much, much less. This means a registration system for trade marks is feasible and desirable.

Further, the purpose of trade mark law is fundamentally different to copyright law. The primary driver of copyright law is creativity. The primary driver of trade mark law is business.

A trade mark registration system is good because it creates certainty. A trade mark is intended to distinguish one person’s goods from those of another. This creates certainty for both the buying public (by avoiding confusion), and for the registered owner (by granting statutory, enforceable, and transferable rights in a defined area).

In most countries, registered trade marks are also published on publicly accessible databases. If you are thinking of a new brand, you can check to see if it is available. Already taken? Move on to something else. Registration therefore increases efficiency and reduces disputes.

4. Enforcing copyright internationally can be a very painful experience
There are many international agreements relating to IP.

Among the most significant are those that extend copyright protection to creators of works beyond the country in which that person is a citizen, or in which their work was created.

These laws can sometimes be used to protect brand logos in a foreign country, without the brand owner needing to own a registered trade mark in that country. For example, it is possible for the owner of a brand logo in one country to rely on copyright ownership to prevent the use or registration of the same brand logo as a trade mark by someone else in another country. (see for example, my own successful opposition against the attempted registration by an Australian company of a brand logo belonging to a US company - http://www.austlii.edu.au/au/cases/cth/ATMO/2014/51.html).

However, using copyright in this way should always be seen as an option of last resort.

Firstly, as discussed above, any copyright protection will usually only relate to a brand logo, not a brand name.

Secondly, each country has its own laws and requirements for enforcing copyright. Proving ownership of copyright in some countries is very difficult, because often there is no documentary evidence of when the brand logo was created, or who is the original author (both being critical elements in a copyright case). Similarly, if a brand logo is owned by a company, it will often be necessary to point to an individual who created that logo for the company (i.e. a contracted designer or employee), and how copyright ownership came to be held by the company (i.e. was it by written assignment or by automatic transfer?).

Thirdly, the legal system in many countries (particularly developing countries) places great weight on official looking documents. Often, if the IP isn’t printed on a cardboard and doesn’t have a Government seal or ribbon, it is given zero weight.

In the IP game, you soon learn that what the law says in a country and how it is administered are often two different things.

So what should I do?
Simple. Do not rely on copyright to protect your brands. Copyright was not designed for that purpose, and doesn’t do it very well.
Registered trade marks are much better at protecting your brand names and brand logos. If you have any brands worth protecting, register them as trade marks.

Download the CCIQ Definitive Guide to Intellectual Property developed in conjunction with our trusted partners Cullens Patent and Trade Mark Attorneys

Blake Knowles

About the contributor:

Blake Knowles is a Principal and Head of Trade Marks at Cullens Patent and Trade Mark Attorneys, where he specialises in trade marks and domain names. Prior to joining Cullens, he was employed by the Australian Trade Marks Office, where his most recent role was the Assistant Director of Trade Marks Hearings & Oppositions. Blake obtained his legal qualifications from the University of Canberra and the Australian National University, and his trade mark attorney qualification at the University of Technology, Sydney.

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