Trademark registration: what exactly is a trademark?
A “trademark” is a sign that you use to indicate your goods or services. In theory, a trademark is protected if it is registered and effectively used within a period of five years after registration. In certain cases, non-registered trademarks may also benefit from some form of protection (e.g. when used as a trade name or under the rules for unfair competition), but this protection is limited. It is therefore advisable to register your trademark through a trademark registration.
Benelux trademark – EU trademark – international trademark
If you want trademark protection in Belgium, you can register your trademark at the Benelux Office for Intellectual Property (BOIP). You will then obtain a “Benelux trademark” that is valid in Belgium, the Netherlands and Luxembourg.
A second possibility is to have your trademark registered as a “EU trademark” (previously this was called a Community trademark) at the European trademark office: “EUIPO” or “EU Intellectual Property Office” (previously known as the “Office for Harmonisation in the Internal Market” or “OHIM”). An EU trademark is valid in all 28 EU member states.
A third possibility is to file a so-called “international trademark” application via WIPO (“World Intellectual Property Organisation”). This is a combination of several national trademark registrations through one single procedure. An international trademark is recommended for instance if you only use your trademark in a few European countries or if you want to protect your trademark outside the European Union.
A trademark expires if it is not used for five years, or if the registration is not renewed in time (a trademark registration is valid for a period of ten years).
Before you start using a certain trademark for your goods or services, you should check whether the name is already registered as a trademark, trade name or domain name. It is best to ask for advice from a specialist in trademark law. You should also check if the name is already being used on social media such as LinkedIn, Twitter, or Facebook. If not, do not postpone claiming the necessary accounts, profiles and company pages!
Word trademark – figurative mark – combined mark
There are different types of trademarks. With a word mark you protect the name of the goods or services you sell.
With a figurative trademark you protect a graphical representation. Typical examples of figurative trademarks are logos or labels. Figurative marks can also consist of a combination of images and words. This is often referred to as a ‘combined mark’ or a ‘figurative mark with word elements’.
Furthermore, there are also shape marks where three-dimensional shapes are protected (e.g. the shape of a bottle or a lamp). In exceptional cases, even sounds (such as advertising jingles), smells, colours, positions, patterns, motions or holograms can be protected as trademarks.
Which type of trademark should you choose?
This depends on the case. It is best to consult a specialist in trademark law who can look into this matter with you.
The golden rule is that a trademark should always be distinctive. If a name or logo is not distinctive, it will not be accepted as a trademark (or, if registered, it might be unenforceable). For instance, when a name is purely descriptive of the characteristics of a certain product, the trademark application will be refused.
If you have chosen a brand that is sufficiently distinctive as a word, we usually recommend that you register it as a word mark. A word mark usually offers the strongest protection.
In the case of a pure figurative mark, no “name” is registered, but solely the logo. If you actually use this logo in practice, a logo registration is certainly recommended.
In the case of a ‘combined mark’ (figurative mark with word elements), the trademark protection applies to the specific combination of words and images in the mark. This type of ‘combined mark’ is often advisable, for instance in cases where the word elements are too descriptive of the type of goods or services.
You should take into account that your word mark will probably not change as quickly as a logo or a figurative mark. If you only register a logo as a trademark (being a figurative mark with or without word elements), then in theory you have to apply for a new trademark application every time you change your logo.
Much depends on how you use the brand in practice. For example: if you use your trademark both as a pure logo, and as a logo with word elements (e.g. a name or a slogan), it is best to opt for separate trademark registrations.
In the case of figurative marks, you must also take into account the colours in which you want to use the logo, in order to make a decision about a colour trademark or a black-and-white trademark.
What are the classes of goods or services for trademark depots?
When registering a trademark, you have to indicate certain goods or services to which the trademark protection will apply. This selection is made on the basis of so-called “classes”, which are subdivided into “sub-classes” (Nice classification system).
Try to make a sensible selection of classes and sub-classes. As trademark lawyers, we often see cases where relevant categories have not been selected (and the trademark registration therefore doesn’t reach its goal), or cases where irrelevant classes give rise to legal discussions that could have been avoided (oppositions, legal proceedings, etc.). It is therefore best to seek advice from an expert trademark lawyer.
How much does a trademark registration cost?
Cost of an EU trademark
For the first class, you pay 850 euros to the EUIPO (the European Union Intellectual Property Office). For the second class, you pay an extra 50 euros. If you select a third class, you will pay another extra 150 euros. If you choose more than 3 classes, you will pay 150 euros extra for each extra class.
In addition, there are the costs of the trademark lawyer who prepares, implements and monitors the trademark application. Feel free to contact us for our prices.
Cost of a Benelux trademark
For a Benelux trademark, you pay 244 euros for 1 class to the BOIP (the Benelux Office for Intellectual Property). For the second class, you pay an extra 27 euros. From the third class onwards, you pay 81 euros per class. If you opt for an EU trademark, you do not have to apply for an additional Benelux trademark (logically, the territory of the Benelux is already covered).
In addition, there are the costs of the trademark lawyer who prepares, implements and monitors the trademark application. Feel free to contact us for our prices.
For more information about the application process for a Benelux mark, see our previous post on Benelux trademark registration process.
The benefits of trademark registration
By registering your trademark, you obtain the exclusive right to use the trademark for the goods or services that you selected at the time of trademark application. This protection applies to the entire Benelux (in case of a Benelux trademark) or the entire EU (in case of an EU trademark), and for a period of ten years. After that, the registration is renewable for additional periods of ten years.
With a trademark registration you can oppose the use of your trademark by others. This is important to prevent others from confusing your (potential) customers. This will increase the reliability and recognisability of your trademark and put you in a better position to take action against those who want to profit from your success.
A registered trademark also creates value for your company. Trademark registration is a sign of professionalism and increases customer confidence. If, in the future, you want to sell your company or brand, registering your trademark is a wise investment. This is also true if you consider setting up a licensing system whereby partners pay you a license fee for using your brand name or logo.
Difference between “trademark”, “company name” and “trade name”
A trademark differs from a company name in the sense that a company name is the name of your company (a synonym is corporate name), not the goods or services you sell.
A trademark also differs from a trade name. A trade name means the name by which you indicate your commercial activity or by which you participate in trade (even though in practice this often overlaps).
The effective use of a trade name is usually enough to obtain a limited form of protection. You don’t have to register your trade name, but a mention of the name in the official companies’ register (CBE) has proven useful. In the case of a trade name, it does not matter whether the name is purely descriptive (with trademarks, the descriptive character is often a reason to refuse registration or to challenge the validity of the trademark).
A trade name offers a more limited protection than a trademark. For example, a trade name is limited to the region where you actually trade under the name. With trade names, there is no automatic protection for the entire Benelux.
As the owner of a (non-registered) trade name, you cannot be prevented from using the name (in the area where you already used the trade name), when the name is later registered as a trademark by someone else. The other party will then have the right to use the name exclusively as a trademark, but will not be able to stop you from using the name if you can prove that you effectively used the trade name prior to the other party’s trademark application. As mentioned before, trademarks and trade names do have a different function and much depends on whether they are used correctly in practice. Such discussions often lead to problems of substantiation and procedural failures. It is therefore strongly recommended that you also register your trade name as a trademark if you also use the name for the goods or services you offer (if necessary, ask for advice from a specialist in trademark law). If the trade name is younger than the trademark registration, the trade mark owner will normally be able to prohibit the use of the later trade name.
Finally, a name can also benefit from legal protection because it concerns a personal name.
Does a trademark entitle you to the corresponding domain name?
No. Domain names, profile names and page names are registered according to the “first come, first served” principle.
It often happens that a name has already been registered by another user and is therefore no longer available as a profile name or page name on a social network.
In many cases, a trademark owner will be able to oppose the use of the trademark by a third party as a domain name, profile name or page name, but this will not always be the case. To take the example of domain names: there are special procedures to claim a domain name (both in court and before arbitration tribunals), but you almost always have to prove that the holder of the domain name has no legitimate interest in the name and that he has been in bad faith. If it concerns a cybersquatter, such proof can rather easily be provided, but there are situations where more than one person can claim a name as a domain name, profile name or page name.
Is a trademark registration a wise decision or not?
Usually a trademark registration is a wise decision. It’s a limited investment that provides 10 years of protection. However, you must be careful not to register redundant names or logos, as this can unnecessarily increase the price. It is also best to select the relevant classes in a correct way (experience shows that people often make mistakes). Finally, you should carefully check in advance which names have already been registered, and which similar trademarks could pose a risk in terms of a possible opposition. It is therefore best to ask the advice of a trademark specialist in advance.
