Logo Protection Through Trademark, Design and Copyright

March 18, 2009

We often receive enquiries from clients wanting to register their logos.  Few know what registration they want or what protection is available, so it seems worth looking at this question in this blog.

Before explaining what legal methods are available to protect logos here are a few examples of the different types of logos that we might be talking about.

1.    A combined mark – that is a word and an image.

The words or numbers incorporated within such a logo should be cleared for trademark purposes before using the logo to ensure it is not already trademarked by a competitor.  This is necessary even if you have already registered the company or domain name.  As a separate matter also have a trademark search to check that the image element is not too similar to a competitor’s trademark.

2.    A stylised mark – that means a word on its own.

The words or numbers incorporated within such a logo should be cleared for trademark purposes before using the logo to ensure it is not already trademarked by a competitor.  This is necessary even if you have already registered the company or domain name.

3.    A device mark – that is an image on its own.

The image element should be cleared for trademark purposes to ensure it is not too similar to a competitor’s trademark.

As trademark registration is often what people ask about, I will just say that what you register as a trademark depends on how you USE the mark in practice.  If you use it only as a combined mark then a single combined registration is sufficient.  If you use the elements separately then you should register each one separately as well as in combination.  For those on a strict budget, start off with a combined registration and then later apply for the separate elements.

However, trademarks are not the only way to register logos.  Essentially there are three ways to register logos:

•    Copyright registration
•    Registering just a design OR a trademark
•    Registering the logo both as a trademark and as a design.

Copyright registration

Copyright protects ‘works’ such as logos, graphic designs, drawings, and photographs.  In the UK copyright automatically vests in the creator of a ‘work’.  The ownership rule can be changed by contract.
While it is not necessary to register copyright in the UK, in some countries such as the USA it is established practice to do so through the Library of Congress.

To stop someone using an identical or similar logo – on their website say – you would need to prove they copied your logo. They could argue you copied theirs or that they came up with the same logo independently without copying yours.

So if you copyright the logo by registering it (you may do so with us or other reputable services) you can establish solid evidence about your logo upfront before any problems arise.  Such evidence should be acceptable to a court of law.  Without evidence it would be time consuming and expensive to sort out disputes over rights to the logo.  Your rights would seem less strong to whoever had copied your logo and therefore your chances of a negotiated settlement would diminish.  However, you still have the problem of proving that the other person copied your logo.

Contrary to popular myth it is not enough to simply post a copy of the logo to yourself.  This is not suitable evidence for a court of law as it could be argued you tampered with the envelope after it was posted.

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Registering just a design OR a trademark

Given that logos will automatically have some copyright protection, what is gained by registering the logo as a design or a trademark?

Trademarks are tools to protect the reputation and goodwill of a business.  They enable your customers to recognise your products and services, and to distinguish you from your competitors.
Registering a trademark is the way to secure exclusive ownership of your unique brand signs, and to protect your business against competitors who use similar names or signs to take business away from you. While in the UK and USA rights in trademarks can be built up through use of the mark, in most countries the first to register will have the rights to a mark.  Indeed even in the UK, if someone else has registered the trademark for 5 years you will find it virtually impossible to stop them using the mark, and would need to rebrand.  Also passing off disputes are time consuming and messy.  My advice to anyone is to register their brand as soon as possible, unless they really don’t care if they have to rebrand and start over with a new name and logo.

Registering Designs is more powerful than copyright, and the problem of proof of the date of creation of it does not arise in the same way as it does with copyright disputes.    Registration of logos as designs can therefore act as a good deterrent to copying. The mere fact that someone else’s logo is too similar to your registered design gives you the ability to stop them using the logo.  In other words it does not matter that they happen to have come up with a similar design without copying yours.

Design registration is available in the UK or in the EU Once registered as a design you may renew the registration every 5 years for up to 25 years.

For those on a strict budget, wanting both trademark and design protection, I would suggest first registering a design.  This is because the right to register a logo as a design is only available for a short window of time (a year).

For international protection an EU registered design combined with a US copyright registration would be a good start.

Registering the logo both as a trademark and as a design

If you have the resources you could obtain both a registered design and a trademark registration (as previously mentioned, it is relevant how you intend to use the trademark as this determines whether to register a combined mark, a logo mark, or a word mark or all three) .

The best way to use a design registration is in conjunction with trademarks.  Having both types of registration gives you a  level of protection that increases the range of situations in which you can stop others stealing your intellectual property.

Design registration protects logos in ways that trademarking the logo does not.  For example, if someone is using your logo on their website for a non competing business, your design registration could put a stop to it, whereas your trademark registration could not. You may only stop others using your trademark if their use of it confuses your customers as to the source of your goods or services.

Also, if someone is using  your logo in a comparative advertising campaign you would be able to object to their use of your registered design logo in their advertisement if you had a registered design whereas trademark law would be unlikely to help you to stop a comparative advertisement – see here.

For information on trade mark pricing, see here