Of logos, words and turf wars

Tony Eades’ recent article, Is your logo a ‘no-go’?, contained sound advice about the benefits of having a current and well-designed logo.

Should you take up Tony’s advice, there are intellectual property issues you need to consider when commissioning a new logo.

First, a logo used to differentiate goods or services in the course of trade is a trade mark.

Trade marks, which can also be words, shapes, sounds and even smells, can be registered in various classes of goods and services to provide the owner with monopoly rights.

So, how original is your design? Not only do you want a logo that is clearly associated with your business, but you want a logo that could not be confused with a pre-existing logo, particularly one relating to a similar business.

A recent case reported in the media demonstrates the point. The well-known trade mark, “Vo-Vo” is owned by Arnotts and has been used in relation to iced VoVo biscuits for many years. Indeed, the trade mark was registered in July 1906.

Krispy Kreme launched a donut called the Iced Dough-Vo, that apparently Arnotts thought was too similar to its trade mark.

In this case, the matter was resolved with Krispy Kreme agreeing to rename the product, but sometimes these disputes end up in expensive litigation.

Any dispute with the holder of a pre-existing trade mark is best avoided. To reduce that prospect, you can search the Australian Register of Trade Marks for similar trade marks, or get an experienced searcher to do it for you.

Second, a logo is an artistic work and will be subject to copyright. Copyright is an automatic right that vests in the creator for their life, plus 70 years.

Where the author of the logo is a member of your staff employed to perform graphic design tasks, the employer will own the copyright, unless there is an agreement to the contrary.

However, if you commission an independent designer or design company to create a logo for you, they will almost certainly own the copyright in the design unless you obtain an assignment in writing. This can and should be done when you commission the work.

Once you have your logo, you should register it as a trade mark in all the relevant classes of goods and services. Sometimes, these are not all immediately apparent.

If you’re conducting business overseas, you should also consider registration in other countries.

Obtaining professional advice and assistance can help ensure something is not missed.

Michael O’Donnell is head of the Trade Marks team at Phillips Ormonde Fitzpatrick, one of Australia’s largest patent and trade mark attorney firms.