Obtaining a trademark registration ‘®’ for your brand seems easy. Based on eleven questions, we will highlight below the main points of attention that must be carefully considered when protecting your brand as a trademark, before filing and after registration of your brand as a trademark.
(1) What can be protected as a trademark?
Any sign that can distinguish the goods and/or services of a company from those of other companies.
Any sign that can distinguish the goods and/or services of a company from those of other companies can be protected as a trademark. Not only words (name of product, service or company), images (logo, appearance of packaging, magazine cover), numbers or combinations thereof, but also colors, slogans, patterns, position on a product, movement of the brand, combination of images and sound (multimedia) and holographic features (hologram) and the shape of the goods or packaging can be trademarks. In consultation with you, we will determine which distinctive signs are best registered as a trademark.
Examples of a trademark
Device mark with word in
Device mark in color
Logo in color
Device mark in black-and-white
Shape of the good
Appearance of packaging
(2) Is each sign suitable to be protected as a trademark?
Certain signs can be refused by the official trademark authorities as a trademark. For example, a sign can be refused as a trademark due to lack of distinctive character.
The official trademark authorities have the authority to refuse certain signs to register as a trademark. The main grounds on which a trademark application can be refused are the following:
- the sign lacks of any distinctive character and/or is descriptive for the goods and/or services concerned: for example the name COMPUTERSHOP for a store selling computers;
- the sign is contrary to public policy or to accepted principles of morality: for example racist statements or obscene images;
- the sign is liable to mislead the public: for example, the depiction of a COW for vegetable margarine.
In most countries, third parties can oppose the registration of a trademark in the relevant trademark register by filing opposition with the official trademark authorities. Generally, opposition can be filed after the trademark application has been published.
(3) In which countries should your brand be protected as a trademark?
In principle, a brand is only eligible to be protected as a trademark in a country in which it is registered as a trademark.
The exclusive right to a trademark is in principle obtained by the first filing and registration in the trademark register and not by the first use of a trademark. Registering your brands as trademarks is therefore a necessary step to obtain the rights to your distinctive signs and to prevent infringement.
Registration of a brand as a trademark starts in most cases with a trademark application in the Benelux.
Brand protection outside the Benelux can be obtained in three ways:
It is not necessary to register your brand as a trademark in all relevant countries at the same time. After the first filing of the trademark in, for example, the Benelux, you have a maximum period of six months counting from the filing date in the Benelux to consider filing your brand as a trademark in the relevant countries outside the Benelux in which it should be protected as a trademark as well. This is the right of priority. By claiming priority the filing of your brand as a trademark in the relevant countries outside the Benelux will obtain the same protection date as the filing date of the trademark application in the Benelux.
After your brand has been registered as a trademark, we recommend to use the ‘®’ symbol next to your brand to indicate that it is a registered trademark. However, before filing your brand as a trademark, it is important to conduct an availability search first.
Registration company register Chamber of Commerce / Domain name registration
Many entrepreneurs wrongly believe that a registration in the company register of the Chamber of Commerce or registering a domain name is a sufficient basis to take legal actions against third parties.
In principle, however, a company name right is a much more limited right than a trademark right and can only be invoked against the use of a closely similar company name (or brand) for similar activities within the (geographical) area where the company name is actually used (the company has customers or actively acquiring customers). A Benelux trademark, on the other hand, is not only valid for the entire Benelux, but does not have to be genuine used during the first five years after the registration date in order to still be able to act against an identical or similar sign in the Benelux.
A domain name is in fact no more than an address on the internet. In principle, no action can be taken based solely on a domain name against a third party who will use an identical or similar sign in, for example, the Benelux for identical or similar goods and/or services. This can be prevented by registering your brand as a trademark in the Benelux.
(4) Is your brand still available?
Conducting the relevant searches must show if your brand is still available as a trademark. Without conducting any relevant search it is difficult to assess the availability of a brand as a trademark and would it be most likely that older rights of third parties might be infringed.
Without conducting the relevant searches prior to the filing of a brand as a trademark makes the availability of a brand as a trademark difficult to assess and, consequently, it would be most likely that older rights of third parties might be infringed. There are several types of searches, including identical and similarity trademark searches, company name searches and in use searches.
The purpose of conducting the relevant searches prior to the filing of a brand as a trademark is to minimize the potential risks of conflicts with owners of older rights. It is our experience that our searches provide a good insight into these potential risks and based on our searches a well-considered decision about the choice of a new brand can be taken. However, no hundred percent certainty can be given. The main reasons for this are that the information we receive is not completely up-to-date and may also be incomplete. In addition, despite our experience and expertise, the final judgment on the cited trademarks and company names remains subjective. Therefore, we cannot accept any liability for any damages resulting from these restrictions.
(5) Choosing the right classes of goods and/or services?
The goods and/or services for which a brand can be protected as a trademark are classified in 45 classes. In consultation with you the number of classes will be determined and we will draw up a tailor-made specification of the goods and/or services.
At the time of filing a brand as a trademark, it is compulsory to indicate the goods and/or services for which the trademark has to be registered. The goods and/or services for which a trademark can be registered are divided into 45 different classes (the Nice Classification). There are 34 classes of goods (1-34) and 11 classes of services (35-45).
The number of classes will be determined in consultation with you and we will draw up a tailor-made specification of the goods and/or services. This will prevent that certain goods and/or services are falling outside the scope of protection of your brand as a trademark.
(6) Should a registered trademark be used?
In most countries a registered trademark should be used within three or five years counting from the registration date. The registered trademark should be used as registered.
In most countries, a trademark right can be cancelled by a third party if the trademark is not genuine used by the owner or a third party with its permission within three or five years counting from the registration date for the goods and/or services for which the trademark is registered. If the trademark is not used for an uninterrupted period of three or five years, the trademark right can also be cancelled. The trademark right can (under certain conditions) be restored by starting using the trademark for the first time or by starting using the trademark again. Furthermore, the trademark must be used as registered. If the trademark is used in any other way, this may also result in the cancellation of the trademark right.
Losing rights by tolerating the use of a registered trademark
In most countries, the owner of a registered trademark will lose its rights to object to the use of a younger registered identical or similar trademark in case the owner is aware of this registered trademark and has tolerated the use of this registered trademark for at least five years.
(7) How are rights granted to third parties?
The right to use a registered trademark may be granted to a third party through a license. A trademark right can also be transferred to a third party.
The right to use a trademark (license) can be granted to a third party for all or part of the goods and/or services for which the trademark is registered. A license in the Benelux can apply to the entire Benelux or only to, for example, the Netherlands.
Transfer of ownership
A trademark right can be transferred for all or part of the goods and/or services for which the trademark is registered. A transfer of ownership in the Benelux can only relate to the entire Benelux.
In principle, a license or transfer of ownership has only a third-party effect from the date the license or transfer of ownership is recorded in the official trademark registers. We can record the license or transfer of ownership for you in the official trademark registers.
(8) Should a change of name and/or address be recorded in the trademark register?
If the name and/or address of the trademark owner changes, it is recommended to record the change of name and/or address in the trademark register.
If the name and/or address of the trademark owner changes, it is recommended to record the change of name and/or address in the trademark register. The trademark register will then always be up-to-date as a result of which notifications from the official trademark authorities, for example, which will be sent in some cases to the trademark owner only will not be missed. In addition, a change of name and/or address of the trademark owner will in principle have a third-party effect only from the date the relevant changes are registered in the trademark registers. We can record the change of name and/or address for you in the trademark registers.
(9) Did a third party file a conflicting trademark?
A trademark can be included in our trademark watch system.
Generally, you will not be aware of other third parties filing an application to register an identical or similar trademark for identical or similar goods and/or services. To be timely aware of this, we recommend that you have your trademark included in our trademark watch system.
In practice, a conflicting trademark is only being noticed after it has been introduced into the market and a reasonable risk of damage has already arisen. If a potentially conflicting trademark is revealed at an early stage, it is often possible to intervene more effectively and at a significantly lower cost (for example, by lodging an opposition) against the infringing party. In general, an infringer will be more inclined to discontinue or adjust the use of the trademark to prevent possible even greater damage. Your trademark can be watched in almost all countries of the world.
(10) What can be done if a trademark is infringed?
In consultation with you, we will determine what actions can be taken against a possible infringement.
In principle, on the basis of its exclusive trademark right a trademark owner can oppose any use and/or (subsequent) registration of an identical or similar sign (such as younger brands and company names) for identical or similar goods and/or services.
If a third party has filed, used and/or will use an identical or similar sign for identical or similar goods and/or services, we will determine in consultation with you which actions can be taken against this possible infringement.
(11) Can a registered trademark be cancelled?
A registered trademark can be cancelled at the request of a third party, for example, due to non-use.
In most countries, a trademark registration can be cancelled at the request of a third party by starting cancellation proceedings with the official trademark authorities. For example, the owner of an older trademark registration may request the cancellation of a possible conflicting younger trademark registration. The cancellation of a trademark registration can also be requested on absolute grounds (including due to a lack of distinctive character/descriptive for the relevant goods and/or services) and due to non-use.