Will the REAL graphic designers please stand up?

October 19, 2023
IP Law

This is it! You’re branching out, taking the leap – one small step for man, one giant leap for mankind – you are going to take over the world! You’ve conceptualised the brand and come up with a trademark that will set you apart from the masses. Next stop, the moon. But first, to find a graphic designer to pin down your incredible vision in a logo form…

But beware of  graphic designers that troll the internet for open source libraries or stock images, make small and/or insignificant changes to the stock image and “sell” them to you as a bespoke logo that was custom designed for your sole use and exploitation. Many open source libraries or stock image libraries have very specific and restrictive terms and conditions surrounding the use of their stock images.

Adobe Stock Additional Terms, for example, provides, amongst other things, that one may not:

“register, or apply to register, a trademark, design mark, service mark, sound mark, or trade name, that uses any Stock Asset (in whole or in part); or claim ownership rights in an attempt to prevent any third party from using a Stock Asset;” (For the Adobe Stock terms and conditions, please see Adobe Licence Terms

The above-mentioned clause specifically prevents you from registering any of the Adobe Stock Image Works as trade marks or attempting to prevent others from using the stock image on the basis of your claimed ownership. In short, your logo trade mark doesn’t belong to you and is unenforceable against infringement by third parties. The Trade Marks Act also contains provisions that restrict you from registering trade marks that you do not have a bona fide claim to proprietorship in. This would mean that your trade mark is vulnerable to expungement from the Register (even if you do obtain registration of the mark).

We would strongly advise making the necessary enquiries from your graphic designer as to the origins of your logo trade mark to ensure that you are absolutely unencumbered when it comes to making use of and exploiting the logo to your advantage.

Another common misconception with instructing a graphic designer is that “if I pay for it, I own it”, and when it comes to South African copyright law, this is simply not the case.

Generally speaking (there are some exceptions), the Copyright Act provides that, “the ownership of any copyright… shall vest in the author … of the work.” In order to take assignment of the ownership in the underlying copyright of your logo, such assignment would need to be in writing and signed by or on behalf of the assignor. This is important for many reasons, one of which is that in order to institute copyright infringement proceedings against a third party, you will need to be the actual owner of the copyright which is being infringed. Furthermore, the owner of the copyright may prevent you from making commercial use of the copyright, which could be very costly and embarrassing to your business. A deed of assignment is a suitable document which will assist in the assignment of the underlying copyright in your bespoke logo from your graphic designer to yourself/your company

Contact the expert IP team at Witz Inc to discuss the best form of protection for your logo trade mark and your copyright assignment needs.