In November last year, Deepend Fresh Recovery Limited, the successor in title to the design firm that created the 'halo' logo as used by the smoothie maker Innocent, was successful in its bid to cancel two Community Trade Mark registrations owned by Fresh Trading Limited (which owns the Innocent business). This case is yet another example of how strictly the law can operate against brand owners where the ownership of intellectual property has not been properly dealt with at the outset.
The case was heard in the Cancellation Division of the Office for Harmonization in the Internal Market (OHIM), which oversees Community Trade Marks. OHIM made it clear that copyright subsisted in the 'halo' logo. There was no evidence of any written agreement between the parties, and so no evidence of any assignment of the copyright in the 'halo' logo to Fresh Trading. As such, OHIM ruled that Deepend Fresh Recovery was the legal owner of that copyright work.
Deepend Fresh Recovery relied on Art. 53(2)(c) of Council Regulation (EC) No 207/2009 (CTMR) 'a community trade mark shall be declared invalid on application to the Office where the use of such trade mark may be prohibited pursuant to a copyright under national law governing its protection'. Successfully arguing that use of the 'halo' logo could be prohibited in the UK on the basis of its copyright in the original 'halo' design. OHIM held that both marks infringed the 'halo' design prima facie.
The interesting part of this case relates to Fresh Trading's defence. Fresh Trading tried to rely on the UK case, Griggs v Ross Evans (the 'Doc Martens Case') where the court of appeal was happy to impose an implied term within an existing commissioning agreement, requiring assignment of the copyright in the DR MARTENS AIRWAIR logo from the designer to Griggs. It was held that this was necessary to give commercial effect to the original agreement to design a corporate logo for Griggs. Perhaps surprisingly, OHIM did not follow this approach and did not imply an assignment from Deepend to Fresh Trading.
However comparing the facts of the cases perhaps this is not so surprising. In this case OHIM would need to have inferred an implied contract between the parties, as well as a term to assign the copyright, unlike in the Doc Martens Case where there was a written agreement. Also, Deepend had not received any remuneration for its work, which was a factor that was emphasised in the Doc Martens Case, where the designer had been paid for his work.
The moral of this story is that, when commissioning a designer or any other services provider, do not rely on the courts implying an assignment to you. Make sure you obtain an express assignment of the copyright in that work. This applies not just to logos but to anything designed or created by a third party for your business including website development, articles, brochures and magazines