“I paid for my logo design, so it’s mine.” Well, this is not always the case.
Most businesses have a logo, for the purpose of distinguishing its goods or services from that of another brand. The first step in getting a logo for your business usually starts with your graphic designer – someone you’ve paid to design your logo on your behalf, so that you can brand your business and apply for the logo to be registered as your trademark.
A trade mark is a valuable asset for any business and in this sense, South Africa’s Trade Marks Act provides a mechanism to enforce your rights against infringers of your registered mark. To enforce your rights in terms of the Act, your trademark must be registered properly. The registration process may take up to two years, or more in certain cases. And if an infringer comes along and copies your trademark, the common law remedy of passing-off is available to you – but its not as easy as it sounds.
In order to succeed with a passing-off claim the aggrieved party must first prove that he has established a reputation among a substantial number of persons and that the reputation in his logo has acquired commercial value. As a new business, you may still need to build up your reputation in your target market.
Copyright subsists automatically and is not subject to registration and does not require having built a reputation to enforce. Copyright will subsist in a logo provided that the logo is original, exists in material form, and the author is a qualified person in terms of the Copyright Act. A qualified person is a citizen of South Africa or an incorporated body in the case of an entity in South Africa, and also includes nationals and/or residents of the Berne Convention countries.
But who owns the copyright in the logo?
In terms of section 21(1)(a) of the Copyright Act, the author is generally the owner of the work. Limited provision is made for commissioned works (works where an individual is paid to create a work for another) in subsection (c), where the author of the work is not necessarily the owner thereof. Such instances are limited only to commissioning of, the taking of a photograph, the painting or drawing of a portrait, the making of a gravure, the making of a cinematograph film or the making of a sound recording. The word “portrait” by definition does not include logos, meaning the graphic designer is the author and owner of the copyright which subsists in the logo by virtue of section 21(1)(a), even if you paid for it.
I have applied for a trademark so why do I have to be the owner of the copyright subsisting in the logo?
Where the above remedies of trademark infringement or passing-off are not available to you, you could institute copyright infringement proceedings for the protection of the copyright which subsists in your logo, provided that you are the copyright owner thereof.
Ownership of copyright is conferred either in terms of the provisions of the Copyright Act, or it can be transferred by way an assignment which is required to be in writing. For you to be the owner of the copyright subsisting in your logo which was created for you by another person such as a graphic designer, a written assignment must be done from the graphic designer to you. When approaching a graphic designer to commission a logo for your business, ensure that you include the assignment of the copyright therein in written format to you as part of the transaction. If not, you will not be able to prevent another party from infringing on your copyrights. Additionally, this will prevent further costs and unnecessary ownership issues relating to the protection of the copyright subsisting in your logo in future if need be.
The different forms of intellectual property (IP) do not exist purely individually and in isolation from one and other. It can be used interchangeably and in certain instances, it is best to put all your IP eggs in one ownership basket.
Paying for it does not automatically mean you own it.
You can contact the Barnard Inc Intellectual Property team to help you with a strategy and facilitation of all your IP legal needs and transactions from the onset.
