Author: Andrew Mullane, Law Graduate
Trade marks are critical in protecting your brand and your business. But how can you safeguard your trade mark? In today’s competitive market, you need to think innovatively when it comes to protecting your brand. In this segment, we take you through some innovative ideas on how you can use copyright and trade marks to build an intellectual property arsenal.
Copyright and trade mark rights are very different
Copyright and trade marks offer very different kinds of legal protection. Those differences must be understood when developing a strategy for protecting your trade marks. Trade mark law is commercially focused and aims to minimise confusion amongst consumers because consumers rely on trade marks to distinguish between brands. Copyright, on the other hand, encourages creativity by giving authors an exclusive right to copy their own works, such as books and paintings, and to profit from their work.
However, certain trade marks can be creative works too. This means that your trade mark may be protected under both trade mark law and copyright law.
In some ways, copyright offers advantages over trade mark rights for protecting your trade mark. Copyright protects a work immediately upon its creation, while trade mark rights arise only after registration or extensive use. Copyright protection is free, whereas fees attach to trade mark registration. And trade mark law allows multiple businesses to use the same mark provided those businesses offer different goods or services. Conversely, copyright can prevent any use of an existing mark. This means that the holder of a trade mark can’t always stop others, who offer different goods or services, from using a similar mark.
However, relying on copyright protection alone is risky. It does not automatically attach to every trade mark. Only specific types of creative expression attract copyright protection, such as literary and artistic works. A literary work is one which affords “information and instruction, or pleasure, in the form of literary enjoyment”. However, word trade marks, despite being literary in nature, are not literary works because they convey no literary meaning. Logos (stylised trade marks), on the other hand, are “artistic works” if drawn with care to obtain a desired effect. Most logos are considered to be artistic works.
To be protected by copyright, a logo trade mark must be original. A work is original provided the author exercised some independent intellectual effort to create it. It cannot be copied from another source. Originality does not require artistic merit. For instance, copyright has been found in Roland’s (the music company) letter “R” logo. However, a logo styled in an obvious way, such as in Arial font, will probably not be considered original.
Copyright only protects your trade mark in certain situations
Copyright only prevents other people from copying your trademark. There is no copyright infringement if a logo is created independently. Also, competitors only infringe your copyright in a trade mark if they copy a “substantial part” of your logo. To do this, they will need to copy the “original component” of the trade mark. When compared to traditional artworks, logo trade marks have a low originality. This means that even slight differences between two logos may mean there is no infringement. As a consequence, copyright will only protect your trade mark in cases where an infringer perfectly and deliberately copies your logo.
Trade mark rights provides broader protection
Trade mark rights offers broad protection and do not have the limitations of copyright. A person may infringe another’s trade mark even when entirely unaware of its existence. As long as you can show that an ordinary consumer would be confused by the infringer’s mark into thinking it is yours, then there is infringement. For instance, “Herbagra” was considered to be deceptively similar to “Viagra” because consumers may have mistaken them for sub-brands from the same company.
In summary, copyright offers an alternative form of protection but it is limited both in terms of the trade marks it can protect (only original logos) and its scope of protection (to stop near-perfect replications). Trade mark rights provide you with broader and stronger protection than copyright alone. If you have an original logo trade mark you may wish to consider registering a trade mark. The copyright you will then have in your logo trade mark can then act as additional protection over and above your registered trade mark rights. We are happy to discuss with you how to build an intellectual property arsenal so you can protect your brand and your business.
For more information please contact Andrew.Mullane@wrays.com.au