Trademark registration – what you need to know

Trademark registration is required in order to:

• take action against infringements
• prevent confusion among consumers
• counter misuse by competitors

Even if you have been using a name for years, you cannot take action against a later-registered trademark that is similar.

In addition, a trademark registration offers practical benefits:

• access to brand protection programmes on platforms such as Bol.com and Amazon
• ability to sell, license or pledge the trademark
• strengthening the value of your business

A trademark is therefore not only a legal instrument, but also a capital asset.

Trade name protection is more limited than trademark protection:

• protection only applies within the geographical area of use
• taking action against a product trademark is not possible

A trade name cannot block a trademark registration. Local use can sometimes be prohibited, but this depends on specific circumstances. A trademark registration, on the other hand, provides a strong and national or regional right, even against larger or established parties.

Trademark protection applies exclusively in the country or region where the trademark is registered.

Important:

• a worldwide trademark registration does not exist
• trademarks are applied for per country or per region

Commonly used registers:

• Benelux: the Netherlands, Belgium and Luxembourg (BOIP)
• European Union: one EU trademark via EUIPO, valid in all EU member states
• International: via WIPO, with a choice of affiliated countries
• National: separate applications per country

Trademark registrations must grow with your activities and ambitions.

A successful trademark registration requires:

• Distinctiveness — The trademark may not be descriptive of the products or services. An existing word can be used, as long as it is not directly descriptive of what you sell.
• Availability — The trademark must not infringe older rights, such as existing trademarks, trade names or copyright.
• Formal correctness — The application must meet the formal requirements of the trademark office.

A descriptive word can sometimes be indirectly registered by adding a distinctive element, or if sufficient distinctiveness through use can be demonstrated.

A trademark is a sign that distinguishes products or services from those of others, such as:

• words
• logos
• shapes or packaging
• colours or sounds

Signs that are too simple, too complex or too generic are often not recognised as a trademark and can be refused. A distinctive trademark has the best chance of successful registration.

Trademarks are registered for specific goods and services, divided into 45 classes according to the Nice Classification.

Important to know:

• more classes means higher costs
• too broad classifications increase the risk of objections
• only activities that are actually offered to the public belong in the registration

Careful classification is often decisive for the strength and enforceability of the trademark.

After filing of the application:

• the trademark office checks the formal requirements
• a substantive test follows (distinctive character)
• the trademark is published
• the opposition period runs (2 or 3 months)
• the trademark is registered if no objection follows

Indicative processing times:

• Benelux: ± 3 months
• EU: ± 4 to 6 months
• International: 6 to 18 months

After registration, the real work begins:

Trademark watch — Infringements are not automatically detected. The trademark owner must actively take action themselves.

Use requirement — After 5 years (and in some countries after 3 years) the trademark must have been used normally. Otherwise it can be (partially) cancelled for non-use.

Consider:

• changes in activities
• new countries
• changed details or new rights holders
• a new logo

A trademark registration is valid for 10 years and can always be renewed for a further 10 years. If the renewal deadline is missed, the trademark lapses. A new application is then necessary and the original filing date is lost.