Author: Mgr. Iva Čípová, 2. 6. 2020
We often register trademarks for our clients, both for the Czech Republic and for the European Union. When we discuss a trademark application, we always ask clients what is their contractual relationship with the graphic designer as the creator of their logo. In most cases, we are surprised to find out that they have no contract. However, failure to enter into a contract with a graphic designer can lead to adverse consequences for the client, as the commissioner of the logo.
Are you planning to create a new logo for your company or business? If you use the services of a graphic or graphic studio to create a logo and other graphics, do not underestimate the conclusion of a written contract. Such an agreement is essential for the future protection of your right to the logo. Why?
The logo is a copyrighted work under copyright law. The rights to the author's work belong to the author, i.e. the natural person who created the work. The author of the work should therefore grant you an exclusive license to use his work (logos and graphics) through a contract. The main reason for concluding the contract is to make sure that the created logo and graphics are original and at the same time no one other than you will be able to use them. The concluded contract should therefore be a combination of a work contract and a license agreement in order to cover both of these possibilities.
The contract should stipulate that the logo was created only for you and your use and that its author may not provide a license to anyone else (a so-called exclusive license). It is also important to define in the contract in which territory the license is valid and whether you are entitled to further modify the logo. From your point of view, the logo should be usable in any territory, for an unlimited period of time, for any number of applications, and with clearly defined options for possible modification, addition, or incorporation into another work.
That is why it is important to choose a graphic or graphic studio according to whether they know at least the basic principles of copyright law, comply with them, and are therefore able to provide you with the guarantees you will need in the future.
Unfortunately, the logo, or part of it, is often "inspired" by an already existing logo, which as an commissioner of the logo you do not have the slightest idea of. You will often encounter problems only when your business becomes more successful, and your brand is more visible on the market. Therefore, we recommend adding a statement of the graphic designer to the contract that the logo and graphic are/will be original and do not violate the rights of others and explicitly prohibit drawing from photobanks, social networks and other sources in the contract.
It is important to note that if the author of the logo grants you a license; the license will not apply to any of the designs that were not accepted as the final logo. This means that you cannot start using other variants of the logo, which were presented to you during the cooperation by the author, without the prior consent of the author, if the final logo ultimately looks different.
If you do not have a contract with the graphic designer, your rights are based only on copyright law. According to the copyright act, the author of a logo has granted a license to the client only to the extent that follows from the purpose of the contract. If you want to use the work beyond this purpose, you can only do so on the basis of a concluded license agreement. In this case, the author of the logo may use the logo himself or license to another, provided that this does not conflict with your legitimate interests. As you can see, this mode is much less advantageous for you as a commissioner of a logo.
If you do not have a contract or consent from the author of the logo to its modification and use, you risk possible disputes due to copyright (for example, the author of the logo may demand immediate abandonment of use of the logo, sue for damages, etc.) or unfair competition. Alternatively, you also risk trademark disputes (for example, the author of a logo may file an objection to the registration of your trademark). The use of your logo not regulated by the contract (or regulated by inadequate contract) may thus end up in court. For example, there is a well-known dispute concerning the logo and visual style of the Prague Zoo.
We recommend you do not underestimate the conclusion of a contract with a graphic designer when creating a logo and graphic, preferably before the logo is created. If you are at the beginning of the process, we recommend that you enter into a work contract and a license agreement. If the logo has already been created, you only need to enter into a license agreement. We have experience with the preparation of these contracts and would be happy to help you with the preparation and/or revision of the submitted contract. Contact us to avoid any future problems.
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