AJPark

Pictures, logos and other graphic designs are a feature of many trade marks. You only need to look at product packaging in a supermarket to see how common pictures are to trade marks.

The best protection for all trade marks is registration. The registered owner has the statutory right to sue for trade mark infringement. Copyright provides useful backup protection for logos and pictorial trade marks. Copyright exists in pictorial trade marks because someone made an original drawing or other “artistic” work.

Often pictorial features are created by brand or graphic designers. Despite ownership rules that exist under the Copyright Act in New Zealand, issues can arise about who owns the copyright in the pictorial feature. It pays to get ownership issues sorted at the beginning of your relationship with your brand or graphic designer to avoid problems downstream.

The author of the logo or picture, the artist, may be the first owner of copyright. Where the logo or picture was made by an employee, then the employer is the owner.

When a business commissions someone else (say a brand or graphic designer) to design the picture or logo, and agrees to pay the brand or graphic designer for their design, then the business owns the copyright. But this commissioning rule does not apply when you want to enforce your copyright in many overseas countries, for example in Australia and the United Kingdom where the brand or graphic designer still owns the copyright.

If you want to be able to sue for infringement of the copyright in a logo or picture, you must be able to prove that you own the copyright. The best way is to get the author (the artist) and their employer to sign a written assignment of the copyright to you. Anyone else involved in the design of the picture or logo - for example anyone else who is commissioned and paid for the work - must also sign a written assignment.

If you buy a trade mark (for example as part of a business purchase) then you must make sure the purchase agreement or trade mark assignment includes a copyright assignment.

There are limits in the usefulness of copyright to protect trade marks. Copyright is infringed by unauthorised copying. First, you must prove there has been copying. If the (alleged) infringing logo looks similar but was independently created, it will not infringe copyright. The infringing copy must be a substantial copy of the original. It will not infringe if it merely copies the idea behind the logo.

If you have a clear paper trail of ownership, copyright gives a useful extra protection for trade marks. Copyright can be used to prevent copying of your logo on unrelated goods or services, and for uses which is not trade mark use.

Copyright cannot and should not replace trade mark registration. Trade mark registration solves ownership problems, and protects your trade mark from any confusingly similar trade mark, even if your trade mark has not been copied.  Make sure you get the maximum benefit from your copyright by making sure that you own it.

An edited version of this article was published in Her Business, January 2008

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  Corinne Blumsky

  Partner