Each Trademark Should Have an Author

By Chaikov, M.Y. & Chaikova, А.M.,[Trademark]

     Millions of people all around the world are engaged in intellectual property work, not only in order to earn their living, but also because of the inherent human need for self-realization, and as a manifestation of their “ego”. We believe that giving publicity to one’s name provides a certain meaning to life, a kind of genetic impulse. One comes to this world to show his worth somehow, to leave his name in the memory of his family, friends, acquaintances, and mankind. Everyone has his own level of achievement in this regard. Having reached it, one keeps his head high, squares his shoulders, and feels his “self” more brightly and clearly. Thus, one of the most essential reasons for engaging oneself in intellectual property work is the opportunity to manifest himself, i.e., to be mentioned as the author of some work, if it originates from his own creative efforts.
     In this context, I would like to discuss the problem of the authorship of trademarks as an object of intellectual property. Currently, much attention is being paid to matters related to trademarks. The number of publications on this issue has increased. These include monographs [4, 5, 6] and articles concerning such facets of trademarks as, e.g., the use of figures [7]. However, the problem of the authorship of a trademark hasn’t yet been raised.
     In various fields of human activities, including that of intellectual property, there are problems that grow out of national borders because of their universal nature. In the branch of Russia’s legal system devoted to intellectual property, as well as that of other countries, there is a gap in respect of trademarks (service marks). Their authors cannot exercise their copyrights, namely, the right to be mentioned as the author of their work. There are authors of inventions and useful models, design inventions and procedures, construction documentation and scientific theories, pieces of literature and music, photographs and geographical maps. The fact is that trademark certificates are published for some reason without reference to their author.
     We shall try to prove from the point of view of copyrights that the designer of a trademark deserves to be mentioned as the author of his own work. According to item 4, Article 6 [1], “the copyright does not cover ideas, methods, procedures, systems, techniques, concepts, principles, discoveries, and facts”. The trademark doesn’t belong to them.
     The analysis of item 1, Article 6[1] shows that the necessary conditions for a trademark to be considered an object of copyrights are the following:
      - it should be a result of some creative activity;
      - it should exist in any objective form.
     Thus, we need to prove the presence of a creative element in the work of a trademark creator.
     Based on the interpretation [3], creative work is an “activity generating something new that has never existed before. The activity can be regarded as a creative work in any field: science, industrial engineering, art, politics etc. – i.e. where something new is being created, discovered or invented”.
      According to Article 7 [2] “those designations may not be registered as trademarks that are identical or similar to the degree of confusion to the trademarks of the other persons”. In other words, each subsequent trademark is to possess novelty in comparison to those already existing.
      The creator of a trademark should take into account the requirements of the patent law, of the advertising psychology and of the constructive technology [4]. A trademark should be expressive, brief, aesthetic, stable, and invoke associations.
      Additionally, there are specific requirements for each type of trademark. Thus, for example, a verbal trademark should be euphonic, and pronounceable. In graphic trademarks, the color palette plays a great role, because it makes the trademark more original, attractive and eye-catching.
     The following (see table 1 [8]) trademarks are well known worldwide; and their cost is very impressive. Authors of these pictures can be proud of having made a contribution to their company’s image.


Table 1

The Most Valuable Trademarks in the World

No. Trademark Trademark depiction Trademark cost, $ billion
1 Coca-Cola 
2 Microsoft 
3 IBM 
4 General Electric 
5 Intel 
6 Nokia 

     Creation of a new trademark is often not only a creative process, but is also a very labor-intensive process. We can take as an example the case of an automobile trademark creation that took place in the USA in 1960s and is described in [9]. “Name often plays the most important part in the success of a new model. It is easier to design doors and decks than to invent the name, for its choice is inevitably of a subjective nature. Sometimes this process takes very emotional forms… We sent him to Detroit Library to select the appropriate animal denominations – from the African anteater to a zebra – i.e., from A to Z. John came back with thousands of propositions, which we reduced to six… We all enjoyed the name “Mustang”. And in the advertising agency they said that it produced an exciting impression of a boundless vast and creates a really American image”.
      In our opinion, all the aforesaid demonstratively prove that the creation of a trademark is the result of creative work.
      Item 1 Article 7 [1] lists the objects of copyrights and does not include trademarks. However, this list is not exhaustive, for it ends with the words: “other works”. Article 8 [1] is restrictive and contains an exhaustive register of works, which are not subject for consideration as objects of copyrights. It doesn’t include trademarks. Hence, the regulations of this Article do not extend to them.
     Thus, on the basis of the trademark analysis according to Articles 6, 7, and 8 [1], we can deduce that a trademark per se can be an object of copyrights, but only with regard to some non-property rights. The property right to the trademark belongs to the possessor of a right, who is not the author in the majority of cases. Therefore, it would be advisable to introduce a section titled “The Authors” in the trademark certificate that would specify the people who created the trademark through their creative work.

     I believe that the international community of intellectual property experts will endorse this idea, and the corresponding changes will be made to legislative acts concerning trademarks in different countries.


Reference List

1. The Law of the Russian Federation No. 5351-1 "On the copyright and the related rights"
2. The Law of the Russian Federation "On trademarks, service marks, and denominations of places of origin of a commodities” No. 3520-1 from September 23, 1992, with the amendments made by the Federal Law No. 166-ФЗ from December 11, 2002.
3. “Big Soviet Encyclopaedia”, Moscow, Soviet encyclopaedia, 1976, vol. 25
4. Shestimirov, A.A. (1996). Trademarks. Moscow, VNIIPI.
5. Biryulin, V.I.m Dudushkin, S.V., et al. (2004). Trademarks in the Russian Federation. Moscow, Arbat-Inform.
6. Volkov, S.I., Voskanyan, R.S. (1991). Trademarks in the conditions of the Market Economy. Moscow, Put’.
7. Chaikov, M.Y., Chaikova, O.M. (2006). The application of the “numeric magic” in marketing./ Marketing in Russia and Abroad, No.4.
8. Chaikov, M.Y., Chaikova, O.M. (2006). Intellectual property as a Source of Competitive Recovery of a Company. / Director’s Consultant, No.1.
9. Li Yakokka (1996). Manager’s Career. Minsk, Paradox.

About the authors: Chaikov, M.Y. & Chaikova, А.M.,Ekaterinburg,Russia


Member Message

  • Only our members can leave a message,so please register or login.

International IP Firms
Inquiry and Assessment

Latest comments

Article Search


People watch

Online Survey

In your opinion, which is the most important factor that influences IP pledge loan evaluation?

Control over several core technologies for one product by different right owners
Stability of ownership of the pledge
Ownership and effectiveness of the pledge