If ever there was an ideal example of the importance of ensuring the right intellectual property procedures are in place, Innocent’s recent trademark difficulties demonstrates it.
Despite being one of the UK and Europe’s top smoothie brands, Innocent has lost its distinctive ‘halo’ logo trademark, after its trademark was invalidated due to Innocent not owning the copyright to it. It’s the designers who created the logo own the copyright in the logo.A comparison between the original sketched design (left) and the registered logos (right).
Commissioning of the halo logo
When the logo was initially created based on a brief to draw a face with a halo above it, Deepend was engaged as the designer. That was back in 1998, and apparently the company was to receive shares in Fresh Trading, Innocent’s parent company.
However, Deepend claims that no agreement was ever reached, and indeed no signed documents were produced in the court case. Ultimately, Deepend went into liquidation in 2001 before receiving any remuneration for the logo design.
Now, 15 years after the logo was initially created, the designers have decided to assert their copyright ownership.
Who owns copyright?
Even though Deepend had been dissolved, it assigned copyright in the halo logo to Andrew Chappell in 2007, and then two years later it was assigned to Deepend Fresh Recovery Limited, who initiated the action to cancel Innocent’s trademark.
Innocent could not show that it ever formally received transfer of copyright in the logo from Deepend, which denies any assignment. So the argument that the designers retained legal ownership of the design was conclusive.
Innocent argued that, even without legal ownership of the copyright, as a matter of equity (or fairness) it should be entitled to make use of the design, a tactic which succeeded in an earlier copyright case, back in 2005.
Previous Case Law
As discussed in my book, Legally Branded, in this case a company named Griggs found itself in a similar dispute regarding the copyright in its logo, which was created by a freelance designer (Evans) who was contracted to merge the existing Dr Martens and airWair logos. As with Innocent’s case, the designer had not formally assigned copyright in the new logo.
Evans claimed ownership of copyright in the Dr Martens logo, and tried to sell it to a third party. However, the court decided that there was an implied contract between the parties, including a term requiring assignment of the copyright. As logos are so fundamental to a company’s identity and branding, it would be wrong to allow the designer to sell it to a third party. The designer was required to transfer legal ownership to Dr Martens.
Reed, one of Innocent’s founders, tried to use a similar logic, claiming that the halo logo was recognisable to consumers, and that to give commercial effect to the agreement to produce the design Innocent should be free to use it. However, the Cancellation Division of OHIM (the European Trademark office) dismissed the argument as unfounded.
What we can learn
This is not the last word on the matter because Innocent has re-applied to register its trademark, and has also appealed the decisions of the Cancellation Division. The IPKat wonders whether the result would have been different if more had been done to demonstrate the recognition commanded by the halo logo in the marketplace.
To many, Innocent’s halo logo is synonymous with the brand. This, and the fact that close to 15 years had elapsed before this issue came to a head, long after the original design agency had ceased to exist, should serve as a stark warning to business owners that they need to consider the legal implications early on during a branding exercise. Developing procedures to tackle obstacles before they arise is the key to avoiding the uncertainties, and the expense, of litigation.
So this case really demonstrates just how vital it is to have good procedures in place using effective agreements from the outset. It is relatively straightforward to get the copyright in your logo transferred to you before any work is carried out, so it makes sense to do this rather than relying on the vagaries of litigation to resolve the matter in your favour.