What is a trademark?

A trademark is a sign which distinguishes your products and services from those of another. Virtually every company, big or small, uses one or more of the following types of trademarks: a wordmark (Apple)[1], a figurative mark (the Apple “apple”), a shape mark (the Coca Cola bottle), a slogan (have a break, have a kitkat), a colour (Cadbury purple).

 

[1]Of course, a company name can be registered as a (word)mark.


Why bother with trademark protection?

Only through trademark protection can you prevent competitors from using an identical or similar trademark. In the Benelux registration not use is a prerequisite for protection. Example: you use the trademark TIGER for tractors. Your competitor  enters the market and uses the trademark TIJGER for tractors. You have no registration but your competitor does. He can stop you from using your trademark, even if you have been using it for years. Moreover, do not forget to register your company name as a trademark in the Benelux. If you do not do so, you will only have the protection afforded to company names by Dutch law concerning trade names. This is limited to the area in which your company is actually trading. When you wish to expand your activities outside that area, you may find you cannot do so because another party has registered your company name as a trademark and therefore has obtained protection throughout the Benelux. Register your company name as a trademark to prevent this from happening.


Procedure

Brand name creation

Since not all trademarks are automatically accepted for registration, it is advisable to give this some thought before filing. The most important ground for refusal is lack of distinctiveness in relation to the products and services for which trademark registration is sought. For example SWEET ICE would be perceived by the public as a description of the product ice-cream, and not as a trademark. On the other hand HÄAGEN-DAZS for ice-cream is registrable as a trademark because, being a fanciful term, it would be perceived as a trademark. Coming up with a distinctive name is something you can do yourself or you can have a company specialized in name creation do it for you. Once you have a shortlist of names you are interested in, you can submit the list to us for a free check. We can advise you which names are lacking in distinctiveness so that you can limit your list to those names that stand a chance. Tip: if you are planning on launching a new trademark in the near future, we suggest you check the availability of corresponding domain names and register these. Once your name gains in reputation there are bound to be domain name hijackers around seeking to register your trademark as a domain name.

Trademark screening

Before registering a trademark it is advisable to conduct a search for prior trademarks. This is because a new trademark may be refused if an older trademark is similar to it. Moreover, you may come across an older similar trademark after having registered and used your own trademark for years. This can be very costly if you are forced to stop using your trademark due to the existence of such a prior mark. An example: older mark for bicycles DIESEL with a filing date of 10 January 1995. Your trademark for bikes: DIEZEL with a filing date of 8 September 2013.  This is too similar to the older mark DIESEL. The owner of the older trademark can prohibit use of the more recent mark and thus force the owner to choose a different name. We can conduct an extensive search for both (phonetic) identical and other similar older trademarks. You will receive a report listing those trademarks that may represent an obstacle to registration, including our advice. If no obstacles are found we can proceeding directly to filing your trademark. Enquire about our free identical trademark check to find out if your trademark has already been registered by someone else. If this is not the case then you may want to carry out a more extensive search for similar trademarks.

Trademark registration

Without a trademark registration you cannot prevent others from using an identical or similar trademark. This means that a competitor can use an identical or similar trademark without having to ask permission and cause confusion. In the worst-case scenario  a competitor might decide to register the trademark himself and subsequently force you to stop using your own trademark. Therefore always make sure you secure trademark registration at an early stage in those countries where you are already on the market or plan to be in the near future. A trademark registration is valid for 10 years and can be renewed indefinitely for additional periods of 10 years. During your first appointment with one of our trademark attorneys you will be asked questions concerning the use of your trademark. Based on this information we can determine in which countries you should file for protection now or in the future and, for example, whether a word, device or a combination word-device mark should be filed and whether the mark should be in colour or black and white. In addition a goods and services specification will be prepared which defines the scope of protection of your trademark. This is followed by an application for registration with the official trademark office, which could, for example, be the EU office or the Benelux office. If there are no objections the trademark will proceed to registration and you will receive an official registration certificate. From this moment on you may use the ® symbol and exercise your rights as a trademark owner such as preventing others from infringing your trademark. Using the ® symbol is not a requirement in the Benelux, but it is advisable since it serves as a warning to others that you have a registered trademark right and can prohibit others from using a similar trademark.

Trademark watching

After registration it is important to have your trademark watched. Annually millions of trademarks are registered and any of them could be similar or identical to your own trademark. Our watch service monitors all new applications for registration. If you subscribe to this service you will receive an e-mail alert every time an identical or similar trademark is filed enabling you to object to its registration if you wish. Allowing such trademarks to proceed to registration may dilute your trademark right and ultimately lead to weakening of the scope of protection. Moreover, the costs of objecting at an early stage are much lower than doing so later in the trademark cycle.

An example: you are having your trademark BRADLEY’S BAKERY watched. Our watch service alerts you to a new trademark for “BRADLEY’S BREAD AND CUPCAKES”. You object and “BRADLEY’S BREAD AND CUPCAKES” is removed from the trademark registry. Your competitor has to choose a new name. Try out our watch service for free during a six-month period. If you use us to file your trademark our watch service comes free during the first year.


Costs

A Benelux trademark registration is valid for 10 years. Protection can be renewed indefinitely for additional periods of 10 years. We offer free advice on registrability of your trademark, as well as a free identical trademark check. A phonetic identical trademark search costs € 250. Filing for trademark protection, including our advice, amounts to € 695. Trademark watch:  this is free the first year if you allow us to file your trademark for you. After that we charge € 75 for the first class of goods and services and € 25 for each additional class. The above prices are based on a Benelux registration. Handling objections is not included. Prices are exclusive of 7% office charges and VAT. Please contact us for further information on our fees.


Conflicts

If you come across a sign on the market – this could be a name, logo, shape, colour - which resembles your trademark, we can assist you in taking action. Contact us and we can walk you through the steps and discuss your options. The opposite could also be the case. You have been approached by another party because they consider your trademark to be too similar to their own. Please get in touch with us. We can inform you which options you have and how to act. In practice most conflicts can be resolved amicably without having to resort to court action. Frequently negotiation can lead to a satisfactory result for all parties and we can assist you and, where possible, help you to avoid legal proceedings.


Our expertise

We have more than 30 years of experience in various fields such as the pharmaceutical industry, the fashion industry, consumer goods and the construction industry. In addition to conducting trademark searches, as well as filing and registering trademarks, we can assist you with the following: providing advice on which trademarks to register or possibly to abandon;  assisting during the trademark examination process; filing objections against new trademark to prevent their registration; trademark watch services; keeping track of renewal deadlines and paying renewal fees; providing assistance in resolving trademark disputes and negotiating settlements; providing expertise in legal proceedings; preparing and evaluating licence agreements; preparing deeds of assignment and recording name and address changes, as well as assignments, in official trademark registers. Please contact us if you have questions as to how we can assist you.


FAQ

Can I do my own search to find out if someone else is using my trademark?

Yes, there are some things you can do yourself to get started and to detect any obvious obstacles. You can type keywords into internet search engines as well as check out the website of the Chamber of Commerce for identical tradenames. In addition, you can search the Benelux trademark register to check if there are any identical trademarks. However, if your chosen name is “DIESEL” such searches will not reveal the trademark “DIEZEL”. We can conduct a more in-depth search on phonetic identical and other similar trademarks, which would include our evaluation of and advice on the results.

I have a tradename registered with the Chamber of Commerce. Is this enough protection?

No, a tradename only protects the name of your company against a confusingly similar name in the area where you are active on the market. If you wish to expand into another area, your expansion will be blocked if there is already another company trading under the same or a similar name in that area. A registered Benelux trademark, however, provides Benelux-wide protection from the moment of registration so if you wish to expand your business you will not need to worry about similar tradenames in another region of the Benelux. These will not form obstacles to your expansion. Moreover, a registered tradename does not act as a badge of origin for your products or services like a trademark so it does not enable you to prohibit others from using a similar sign for their products or services.

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