The importance of having proper contracts with your designers (or any consultant).
The owners of smoothie brand “Innocent” have had to deal with the cancellation of two of their Community Trademarks (effectively “European” trademarks) including the famous halo logo.
It all happened when a successor to the original design company that was commissioned to create the trademarks design, claimed that they, and not Innocent, had ownership. This was on the basis that they had copyright to the design of the halo logo.
There were obviously more complicated legal points around this trademark cancellation, which included the fact that the original designers hadn’t received payment for their work, which helped their case. But the key commercial points were:
- It’s a common misconception that if you’ve paid for something then you own it. However, in terms of intellectual property, this isn’t the case. Copyright for example is an automatic right that rests with the creator of the work – in this case, the company that designed the halo logo – unless it is otherwise transferred.
- It’s important to ensure that, when commissioning a designer or consultant, you have a suitable document in place that makes it clear that all intellectual property rights in any deliverables (e.g. websites, magazines, etc.) will be transferred to you. This is especially important if you are building a brand, which is a significant asset of any business.
It’s interesting that Coca Cola, an avid defender of its brand (remember the pursuit of the Relentless restaurant on the South Coast?) now owns the Innocent brand but failed to pick up on the halo logo issue when it purchased Innocent (or maybe it did, but decided to take the risk – who knows?). When it comes to branding, getting appropriate registrations and protections in place is imperative. However, it’s clearly important to make sure the paperwork stacks up too.
A simple exercise
The moral of the story is not to become a headline for the wrong reasons. A simple paperwork exercise, which takes a little thought at the outset, can save a lot of time and money in the long run. The reality for Innocent now is that the cost of protecting its brand will be a lot more expensive than it would have been with the Community Trademarks still in place.