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A common problem that could come back to bite many New Zealand companies is the assumption that they have a right to trademark their brand once they have paid the artist for the design.

Intellectual property expert, Theodore Doucas of Zone IP, an intellectual property management consultancy in Wellington, says simply paying an artist to create a brand doesn’t vest the company with trademark rights.

“When commissioning a logo or any branding work, management should ensure that they have a contract vesting the company with the rights to its own brand, which includes the rights to trademark that brand.”

Mr Doucas says that while it doesn’t make much business sense for branding companies to contest the right to a brand they have designed for a client, it does happen – and when it does, it’s the company that commissioned the work that will end up with the problem.

“Unfortunately common sense doesn’t always coincide with the letter of the law. Rights are always invested with the creator, so ensure you have discussed ownership, that you have a contract in place and that you have paid your bill.

“If the branding company does not want to give the management the rights to the artwork, they should find another branding company who will.”

He says failure to do so entitles the artist to object to a trademark application or to assert rights to that trademark at a later date.

Another practise by some branding companies was to give the client a perpetual right to the brand.

“Perpetual rights are normally fine, but it is a tough area and people do need to be careful,” he said.