While the right in a trademark arises upon registration in the trademark register, copyright originates automatically with the creation process, which is why it is so easy to be overlooked. But according to European case-law, a trademark must be an original intellectual creation that is expressed in a manner which makes it identifiable with sufficient precision and objectivity in order to be protected under copyright law. Trademarks are not identifiable unless they stand out from those that are ordinary or commonplace. In this context, descriptive word marks and simple graphics may not meet the threshold of copyright protected works.
However, whether a work is protected by copyright law is at the discretion of the national courts of member states. Two Austrian decisions show how different the results can be:
The Austrian Supreme Court found the sign
to be protected under copyright law. According to the court, the logo gains its individual character and originality from the different design and special combination of its two elements, which each contribute significantly to the uniqueness of the whole sign (22.06.1999, 4 Ob 159/99g).
In a different case, the Higher Regional Court of Vienna recently decided that the sign
was found not to be protected under copyright law, as it is limited to a simple representation of a stylised dragon head and a broken circular surface, which does not stand out from that which is commonplace (19.12.2018, 133 R 80/18i).
These two examples demonstrate how difficult it is to predict whether a sign enjoys copyright protection. However, the threshold for a trademark to be copyright protected is difficult but not impossible to reach. Just keep in mind that your trademark may be a copyright protected work, since it could be worth raising this argument in a legal dispute.
You should consider the following two brand-saving tips when creating a brand to be prepared for potential disputes:
- Ensure that your company secures the copyrights of the brand.
Designing a brand is expensive and time-consuming. There is nothing worse than realising later on that you do not own the copyright of your valuable and reputable brand. Therefore, make sure that the designer (whether an employee or someone commissioned from an agency) contractually grants you the exclusive right to use the work.
- Meticulously document every single step of the design/creation process of your brand.
You never know if you will have to prove authorship or ownership of your (possibly) copyright protected work. In this case, documentation is key. There are online services to create tamper-proof evidence (see e.g. <wipoproof.wipo.int>) that could help you in legal disputes.