Trademark law and copyright are two very distinct branches of intellectual property.
On the one hand, trademark law is part of the “distinctive signs” group and, on the other, copyright is part of the “creations” group. Likewise, trademark law is part of “industrial property”, while copyright belongs to “literary and artistic property”.
Trademark law is subject to filing formalities and then to registration, where copyright arises without formalities (by creation alone).
The scope of protection is also different, the mark being – in principle – limited to the classes of goods and services chosen at the time of filing (principle of specialty), where copyright applies to the work as it is. , per se, without limitation related to products and services.
Thus, for example, if a slogan is registered as a trademark, the protection attached to this slogan will be limited to the classes of goods and services chosen when the trademark is filed; while if the slogan is considered original and is eligible for copyright protection, it will be protected per se , regardless of classes of goods and services; and it will therefore be possible to oppose the use of this slogan by any third party, regardless of whether this third party uses said slogan for identical, similar or, on the contrary, completely different products and services.
The conditions of protection also differ: availability, distinctiveness, filing, etc., for trademarks; originality for copyright (originality which is not necessarily confused with novelty).
There are still many other distinctions between these two types of intellectual property rights, but the aim here is not to review, in an exhaustive way, all the differences between these two intellectual property rights.
Trademark law and copyright may however meet
Beyond the few major differences that have just been identified, we must be aware that trademark law and copyright can meet.
Indeed, in some cases, trademark law and copyright may have a similar scope.
I already mentioned it above about slogans. A slogan, if it is original, may be protected by copyright. At the same time, however, a slogan, if it is distinctive, can be registered as a trademark and be protected by trademark law.
The same is true of a title. A magazine title for example. Or the name of a literary work. As we have already said here, “Tinting” is both the name of a work (that of Herger) as well as the name of its central character. In this regard, there is no doubt that “Tinting” is protected by copyright. At the same time, we see that “Tinting” is protected as a trademark.
Finally, the most significant example is surely the logo registered as a trademark (figurative or semi-figurative). This logo, before being a trademark, will be – if the condition of originality is met – a work within the meaning of copyright, since the creation (therefore protection by copyright) precedes the trademark filing. And therefore the potential protection by online trademark law.
This phenomenon, where several protections by intellectual property for the same “object” are possible and possibly cumulative, is called “accumulation of intellectual rights”. In this case, the combination of trademark law and copyright.
But who says accumulation of protections also says potential conflicts, in particular when the holder of each protection is not the same person.
Examples of conflicts – cases where the trademark owner is not the copyright owner
Say you register a trademark without owning the copyright to the sign you want to register as a trademark.
Two main situations can be distinguished (but others are possible):
1. You have had a logo made by a graphic designer or have a communication agency work on an original name / slogan for your activities.
You then wish to have this logo / name / slogan registered as a trademark.
After all, if you have mandated the graphic designer or the communication agency, it is good for your branding, your advertising; to be able to exploit the fruit of the work of the graphic designer or the communication agency.
But you have not obtained the copyright to this logo, name and / or slogan from the graphic designer or the communications agency.
As a reminder, the assignment of copyright is not, in principle, self-evident and is in no way automatic, even when a work is created “on order”, “on instructions” or “on order” – as I Have already explained it many times (see for example: Website creation, you have called on a developer: do not forget to be granted the rights! and The importance of being granted the rights of ‘author on its logo or website).
The assignment of copyright does not in principle go from either, this means that at any time the graphic designer or the communication agency can oppose the trademark filing that you will make of the logo, name and / or the slogan by invoking its previous copyright which you have not acquired and which is therefore still its property.
The (previous) copyright, in this case, therefore makes it possible to oppose a trademark filing.
2. You register as a trademark a sign (logo, name, slogan, etc.) which has not yet been registered as a trademark. You have checked the trademark registers (OBPI, EUIPO, etc.), it is clear that this sign is free since it is not registered as a trademark.
Yes, but a third party comes forward and invokes a copyright on this sign , either because the logo, name or slogan that you wish to deposit is really identical to the sign on which it invokes a copyright, or that it is even simply approaching or the like.
You tell yourself that he is wrong, that there is no problem; since you have carried out prior art searches in the trademark registers and no trademark has been registered and therefore you are the first applicant.
Well no, certainly the sign is free of rights from the point of view of trademark law; but if the third party can claim a valid copyright in the said sign, the earlier copyright may indeed prevent the trademark filing.
In this case too, the (earlier) copyright makes it possible to oppose a trademark filing.
Case Gambling Commission vs. IF HIS. Loyalty Italia Sal (EUIPO)
A recent case (24 503 C; decision of 12 June 2019) assigned to the Cancellation Division of EUIPO (the European Intellectual Property Office) illustrates the second situation referred to above.
An Italian company had registered the following design as a European trademark:
A British company opposed this trademark registration by invoking copyright on the following designs (not registered as trademarks, therefore):
The Cancellation Division of EUIPO accepts the opposition and refuses the mark for registration on the grounds that a copyright is an anticipation which makes it possible to oppose a mark. And in this case, when a copyright is invoked, it is not even necessary to prove the likelihood of confusion (the copyright protecting the sign – the work – as it is without reference to the products or services).
If you own a copyright in a logo, name, title, slogan or any other form of work that an unauthorized third party then files as a trademark, you can oppose this trademark registration. On the basis of your copyright.
If you want to register a trademark, check the trademark registers carefully, but bear in mind that there are other types of prior art than trademarks that may pose a problem for the validity of your filing. Copyright is a good example; but other earlier rights can also pose a problem as an anticipation.