It is important to ensure that it is clear who owns the rights to the trade mark.
Trade marks are valuable assets, and registered trade marks can give you a right to stop third parties from using identical or similar marks in relation to identical or similar goods and services. They can add massive value to your business, but if you don’t own the rights in the trade mark in the first place, someone else might have a claim over that value and could even try to stop you from using the mark. You can avoid that risk by making sure that you have proper contracts in place.
When you engage a third party to design or come up with a trade mark for your business, it is important to ensure that it is clear who owns the rights to the trade mark.
If the trade mark has been designed by an employee in the course of their employment, then it will generally be owned by the employer, unless anything different has been agreed in writing. But if the trade mark has been designed by anyone else (a consultant, a design agency, a friend, or anyone – including a founder – before incorporation of a company) then that person will own the rights in the trade mark, unless anything different has been agreed in writing.
To ensure that the right entity owns all the rights in the trade mark, you need to ensure that you have an appropriate contract in place with the person that is designing or has designed it. This can be put in place either before they are engaged to design the trade mark (which is preferable), or after they have completed the work.
Putting an agreement in place before work starts will help to give you certainty, as there is no guarantee that someone will sign anything after the work has been done – especially if they can see the added value in what they have done, in which case they are likely to demand more money than they would have done before they started.
If you don’t have an appropriate agreement in place, there is a risk that the original designer could assert their rights over the trade mark either to demand (more) money from you or potentially to try to stop you from using the mark.