Most companies hire brand design services from a freelance or a design and advertising agency when they need to improve their image and create a solid corporate identity to connect with their audience and improve their online reputation.
So far so good. But what happens with those creations? Do you know exactly who owns the rights to them, the client or the designer?
According to the the International Intellectual Property Convention, a designer who creates a brand, be it a logo or a corporate identity, will always have the moral rights to it, even when the logo has been assigned to a third party.
On the other hand, the ownership and exploitation rights of the logo do not necessarily belong to its creator. In fact, whenever the creation of the design is the result of an employment relationship or a contract for the provision of services, the ownership and exploitation rights will belong to the employer, who has requested the creation. This is because it is understood that whoever "directs" the work must be its owner, and in these cases, the logo design will be directed and guided by the employer, who will be the one to give the final agreement to the design.
It is therefore important to differentiate between the "moral rights" that always belong to the creator of the design, and the " exploitation rights" that belong to the employer, requester of the design, provided that it is made in the context of an employment or service contract.
Faced with this situation, many doubts that arise about the transfer of rights in the field of brand design and everything that it encompasses. This is why we are going to look at a series of relevant questions on this subject in order to avoid issues.
Trademark design: Is it compulsory to sign a contract for the assignment of rights?
No. It will not be necessary to create a contract transferring ownership of the design and exploitation rights because, as the law states, unless there is an agreement to the contrary, whenever a contract for the provision of services is made by which the design of a trademark is requested, it will be understood that the rights to the design will be transferred to the entrepreneur or applicant of the design.
Therefore, the contract for the provision of services requesting the creation of a design will imply the assignment of ownership to the entrepreneur who requested the creation.
Having said this, it is always advisable to add a clause assigning ownership and exploitation rights in the contract for the provision of services in order to avoid possible misunderstandings in the future.
Why should you register your trademark?
Usually, once they have accredited the authorship of their design, the designer will cede the rights to the company that has made the order through a contract.
The fact that you have signed the contract for the provision of services does not mean that you have the exclusive right to exploit that brand and prevent third parties from using it without your consent. To obtain this exclusive right, the only option is to register it with relevant Trademark register in your country of choice. For instance, if you are going to use your brand in any EU country, we recommend registering your trademark in the European Union.
Therefore, to avoid appropriation by third parties, the trademark must be registered with the relevant institution. Otherwise, anyone could appropriate it or use similar and confusing elements.
Additionally, registering your trademark after signing the contract for the assignment of rights will bring you the following benefits:
- You will get the exclusive right to that design in the marketplace.
- You will position yourself above your competitors.
- You will be protected from third parties who copy you or intend to copy you.
Step-by-step registration of a trademark
Anyone registering their trademark must go through an administrative registration process that includes the following phases:
- Application (where the representation of the mark is submitted).
- Publication in the official gazettes (so that others can file an opposition to that registration if the case arises).
- Approval or refusal of registration.
We therefore advise you to file for registration as soon as possible, before anybody takes advantage and moves forward with the registration of that mark, as has happened on many occasions. Remember that if this happens, you should file an opposition to that registration with all the detailed information (briefing, assignment of rights contract and all the evidence you have) and have specialized help to prove your ownership.
Author: Edith Gómez