Guide to Benelux trademarks

Trademarks often list among the most valuable assets of your business. Therefore, it is important to properly protect your trademarks from infringement or generification. Below is an essential guide to trademark law in the Benelux, to help you properly protect your Benelux trademarks.

Different types of trademarks

Trademarks are signs that you use to distinguish your goods or services from those of your competitors. They can be either word marks (the name of your good or service) or figurative marks (also called device marks; examples are logos and labels). Figurative marks can be either combinations of word and image, or image-only marks or three-dimensional shapes (such as the shape of a specially designed bottle). In exceptional cases, even sounds (such as certain advertising jingles) or specific colors (when people recognize a certain product or service by its color) can be trademarks.

A trademark is not a trade name

A trademark is different from a company's trade name. A trade name is the name under which a company or individual conducts its business (for companies, a trade name is often the same as the company name). Your trade name is usually the name you registered with the "Kruispuntbank" database in Belgium or the "Chamber of Commerce" register in the Netherlands and in Luxembourg. If you offer your goods or services under your trade name, you can register your trade name as a trademark. However, keep in mind that a registration of your business with the Kruispuntbank or the Chamber of Commerce does not automatically entitle you to a trademark on the goods or services that you sell.

Benelux trademarks - Community trademarks - International trademarks

Your registration of a Benelux trademark will be valid for the entire Benelux territory (i.e., Belgium, the Netherlands and Luxembourg) for a period of 10 years. The 10-years' period is renewable for an unlimited number of successive 10-year terms.

If you also want protection outside the Benelux, you can apply for a "Community trademark" (also called European trademark), which will provide coverage in all 28 EU countries simultaneously (see OHIM). The main advantages of a Community trademark are the simplicity of the application and registration procedure, the relatively inexpensive registration fees, and the uniform protection of the trademark across the EU once it is registered. However, there is a risk that your application will meet objections in 1 or more of the 28 EU countries (such as a refusal or opposition by earlier trademark owners), so that the procedure may turn out more costly than expected. An objection or a cancellation of the registration in one single country may jeopardize your entire Community trademark, even if you do not intend to conduct your business in this specific country. If you want to apply for a Community trademark, you should be prepared to effectively use your trademark in a considerable part of the EU and to duly enforce your trademark across the EU (which may turn out to be costly as well).

As an alternative, you can apply for an "International trademark" if you want coverage in only a few EU countries or in non-EU countries (see WIPO). An "International trademark" is in reality a bundle of different national trademarks, obtained through a single centralized application process that is relatively cheap and smooth. The international application must be based on a basic application (such as a Benelux or Community application in accordance with the normal procedure). You can also apply for a Community trademark via an international application, which is often a good option if you operate in various EU countries but not in a considerable part of the EU.

Finally, you can also file multiple distinct national trademark applications in different countries. However, if you want protection in a large set of countries, you will be better off with a Community trademark or an International trademark.

If you want to register your trademark in other countries within 6 months of your Benelux application, you can claim "priority" (i.e., the subsequent trademarks will acquire the same protection dates as your initial Benelux application). This applies also to subsequent international and Community trademark applications.

Why should you protect your brand as a trademark?

By registering your brand as a trademark, you prevent others from using the brand and confusing your (potential) customers. Since people recognize your products or services by their brand name, the registration of the brand name as a trademark means that you increase the recognizability and trustworthiness of your business towards your (potential) customers. Also, you will be able to take action against competitors who try to abuse your brand and to benefit from your marketing efforts.

A registration will help your brand to grow your business. After some time, your trademark will represent a lot of goodwill and money (i.e., if you have protected it).

Even if you are only a small business or a start-up, it is often worth to register your brand as a trademark straight away. If you wait too long, you may find that you are too late to take action against a competitor's use of your brand.

In the end, the registration of your brand as a trademark represents only a small investment for the protection of your business.

How to register your trademark? The registration procedure

You can apply directly for your trademark online on the site of the BOIP. The Benelux Office for Intellectual Property (BOIP) is the official body for the registration of trademarks and designs in the Benelux.  Completion of all formalities takes on average 4 to 6 months, after which your trademark will be officially registered and protected. You can also opt for a priority registration, which will take just a few days. This procedure is great when you need quick protection, but can lead to cancellation later on, based on an opposition or a refusal on absolute grounds.

Before you start the procedure, first check online on the website of the BOIP whether older identical or similar trademarks already exist.  This registry contains not only Benelux trademarks, but also Community trademarks and International trademarks that are valid in the Benelux. You can also check directly the registers of the Office for Harmonization in the Internal Market (OHIM) for Community trademarks or of the World Intellectual Property Organization (WIPO) for International trademarks. Finally, you can check the different national trademarks for various European countries at the database of TMview. The good news is that these databases are up to date, easy to use and completely free! The bad news is that the BOIP will not automatically check whether your trademark application violates any previously registered trademarks. If you do not like to do this work yourself, you can ask the BOIP to do an informative search for you for a fee (the forms are available in Dutch and French), or you can hire a specialized trademark agent for assistance. Before starting the application procedure, it makes sense to check whether the internet domain name that corresponds with your trademark application is still available.

When you file your trademark application, you will have to specify the goods and services for which you want your trademark to be valid. This is done on the basis of an international classification system (the so called "Nice Classification"), which comprises 45 classes (34 different classes for goods and 11 for services). You can use the "Madrid Goods & Services Manager" to find the right class(es) for your trademark.  Alternatively, you can ask a professional advisor such as a trademark agent or a lawyer to assist you. Keep in mind that the list of goods or services for which your trademark is valid cannot be extended after registration of the trademark. It is thus important to make a realistic assessment of the future use of your trademark.

After you have filed your application, you will receive a confirmation of receipt and the BOIP will check whether the application meets certain minimal requirements (Is the trademark clearly presented? Is the name of the applicant clearly mentioned? Are the goods/services clearly described?). If you did not yet pay for your application, you will be given 1 month to do so. The "filing date" (which is important to determine the priority of your trademark application in relation to other applications) will be set at the date on which the minimum requirements have been fulfilled and the payment has been received. After approximately 14 days, the application will be published and you will be able to track the status of your application in the BOIP register (note that this is not yet a registration of your trademark, but only a publication of your request for registration).

Counting from the first day of the month after publication of your application, third parties will have 2 months to file an opposition against the application. An opposition can be filed if the new trademark application is considered to be identical to the prior mark for the same goods or services; if the new application is considered to be identical or similar to the prior mark for the same or similar goods or services and there is a likelihood of confusion in the mind of the public; or if the new application is liable to create confusion with a trademark that is considered to be well-known (a well-know trademark is a mark that has established enough goodwill with the public that it is protected even if it is not registered). In the opposition procedure, the BOIP will first encourage parties to settle their dispute. If a settlement fails, the BOIP will hear both parties and take a decision (either a rejection of the opposition or a refusal to register the application). Within 2 months of the decision, parties can lodge a petition with the Courts of Appeal of Brussels, The Hague or Luxembourg to obtain an order to cancel the decision of the BOIP.

The BOIP will also carry out a substantive examination of the trademark application (the so called "assessment on absolute grounds"). If the BOIP decides that your trademark is not fit for registration (for instance because it lacks distinctiveness, because it is deceptive or because it is contrary to morality or public policy), you will have 6 months to object to the refusal with the BOIP. If the BOIP confirms its refusal, you will have 2 months to lodge a petition with the Courts of Appeal of Brussels, The Hague or Luxembourg to obtain an order for registration of the trademark.

If your trademark application fulfils all the legal requirements, it will be registered in the BOIP trademark register and you will receive a certificate of registration. This procedure may take up to 4 months (and considerably longer if an opposition against your application has been filed or if the BOIP refuses your application on absolute grounds). As of the day of registration, you will officially enjoy all the rights of exclusivity that come with your trademark. The filing date (not the registration date) will be date used to determine who has the oldest right if a conflict with a third party occurs.

If you opt for a priority registration (also called accelerated registration), your trademark will be registered as soon as the formal requirements have been checked. This procedure usually takes only a couple of days' time. However, you should keep in mind that the assessment on absolute grounds (and a possible opposition against your trademark) will take place after registration. In other words, your trademark registration may still be cancelled after its registration.

What are the fees for a Benelux trademark application?

The basic cost for applying for a Benelux trademark in 3 classes is only 240 EUR. For each additional class (after the third class), you will pay an extra 37 EUR. For a priority registration (up to 3 classes), you will pay a supplementary fee of 193 EUR (and a supplementary fee of 30 EUR after the third class). These costs will not be reimbursed in case of non-registration following an opposition or a refusal procedure. The renewal fee (after 10 years) is currently 260 EUR (for up to 3 classes). There is no annual fee to maintain your registration. You will find the full list of charges and fees on the website of the BOIP. For a Community trademark (EU), the basic fee is 900 EUR for an online application.

If you use professional advisors (such as a trademark attorney or specialized trademark agent), you will have to add their fees to these basic costs. Using professional advisors is often a good idea to increase the success of your application and to bolster the effective power of your trademark. If you need a Belgian trademark lawyer, do not hesitate to contact me for any inquiry (see the contact page).

Can I license or transfer my trademark?

Yes, you can. A transfer of a trademark can in principle only be effectuated for the entire territory covered, but a license can be granted for a particular part of the territory. Make sure to report the transaction to the BOIP in order for it to be binding on third parties.

For more information on how to protect your trademark in Belgium (and the rest of the Benelux), read my separate blog post. 

Do not hesitate to contact me for any question, comment or suggestion. Also, if you need advise from a specialised trademark lawyer / attorney on trade marks in Belgium, the Benelux, or the E.U., I will be glad to help you.

Author: Bart Van Besien

Finnian & Columba

Belgium

bart@finnian.be

Attorney - Lawyer - Brussels - Belgium - Benelux - European Union (E.U.)

Specialised in intellectual property law (copyright, trademarks, patents, domain names, etc.) and media law.