By: Jaime Israel Dávila Gómez, copyright and trademarks expert attorney
While it is true that copyright and trademarks belong to parties other than intellectual property, it is also true that the same object can be subject to the two aforementioned protections, requiring something that in practice has been called cumulative protection.
Here it is worth remembering that a brand is any sign that is used to, in the market, distinguish a product or a service from similar ones. In a certain way, a trademark registration grants a “monopoly” or exclusivity over a sign in relation to specific products or services. In the case of copyright, these are also exclusive rights but not necessarily linked to the commercial part. These rights are of a personal and economic nature and are always born with the creation and fixation of a work in favor of the author, although the latter may transmit later in favor of a third party making him the owner.
In relation to the topic above, we have that the designs used as part of a brand become objects that are capable of obtaining both protections: as a brand and as a work protected by copyright. At no time does one imply the exclusion of the other.
What is the recommendation in these cases? Ideally, it is that the person who uses the brand, gets the registration in the corresponding product classes, to obtain legal certainty that you can exclusively use such a sign. In addition, and although registration is not necessary for the protection of works, it is best that whoever uses that brand, registers the work in its capacity as the owner (which means whoever can exploit the work) or if it is already registered, enter a contract that justifies its use for commercial purposes.
Another option is to sign a contract from the beginning to ensure that all the corresponding author rights are in the power of whoever will use the sign that is at the same time a mark and work protected by copyright. All of the above is to give certainty to whoever uses the brand and who are not invading third parties’ rights.