Copyright registration can provide a simple and relatively low cost means for warding off trademark squatters. As always, early action is required because it is most useful if the registration predates the date of filing of the squatter’s trademark application. If not, other evidence will generally also be required to block the squatter’s trademark application.
Requirements to obtain copyright protection and be able to enforce it:
1. The brand must be unique/distinctive
- Unique means the work (in this case a brand) is a result of independent intelligent creation.
- The trademark must be distinctive enough to be considered as a work. A trademark consisting of a simple device or graphic may not pass this threshold. This is not examined during registration but it is still worth considering.
2. Ownership of copyright must be proven
- Original drafts of the design embodying the trademark should be provided along with the name of the owner and date of creation, evidencing the evolution of the design;
- An original copy of the design;
- A declaration by the author(s) of design that they created the design;
- The contract on ownership of the design or the contract of commissioned creation, if applicable;
- Any publication of the design.
The mark used by the ‘copier’ must be identical or substantially similar to the mark depicted in the copyright registration.
4. Possibility of access to the mark by the copier
Evidence should be provided to establish that the copier knew about, or should have known about, the mark depicted in the copyright registration. Evidence of use of the mark in other countries (in the form of copyright or trademark registrations) before the application date of the copier’s mark could be considered in this regard.