Every business uses signs to distinguish its goods or services on the market. These signs may take the form of words, names, designs, letters, numbers, colours, the shape of a good or its packaging, or even sounds. Such signs can be protected as trade marks provided they are used to distinguish the goods or services of an undertaking from those of other undertakings and are represented in such a way as to allow the object of protection to be clearly and precisely determined. While sounds or holograms, for example, could meet the latter criterion, this will not be the case, given the current state of technology, for tastes or smells.
An exclusive right only arises if a trade mark is registered. With respect to the geographic scope of protection, a Belgian undertaking has the choice of registration with either the Benelux Office for Intellectual Property, in which case the trade mark is protected throughout the Benelux, or the European Union Intellectual Property Office (EUIPO), in which case protection extends to the entire territory of the European Union. At the time of filing an application, the applicant must indicate the goods or services for which it wishes to register the trade mark. Once the mark is registered, the company may oppose the use by a third party of its trade mark or a similar sign for goods or services for which the trade mark is registered or for similar goods or services if there is a likelihood of confusion. Thus, the holder of a trade mark registered for bicycles may object to the use of its trade mark or a similar sign for scooters but not for computers. An exception is made for well-known or reputed trademarks. The holder of the Cartier trade mark, for instance, may object to the use of its mark in relation, for example, to beverages even if the trade mark is not registered for such goods.
At the time of filing, it is important to ensure that the mark (or a similar sign) has not already been registered by another party for the goods in question and that it meets the conditions for validity provided for by the applicable legislation.
We would like to draw your attention to three - often overlooked - precautions to take once a trade mark is registered.
First, in order to maintain its rights, the holder must make genuine use of its trade mark, i.e. for the purpose of creating or preserving an outlet obtaining commercial opportunities for the goods or services for which the mark is registered. In the absence of genuine use for an uninterrupted period of five years, a third party may commence revocation proceedings to have the trade mark stricken from the register. It should be noted that the trade mark will be maintained if use thereof starts or recommences before the announcement or beginning of revocation proceedings.
A second precaution is the need to oppose any infringement of the trade mark. Indeed, the holder of a trade mark that tolerates the use of a subsequently registered mark for a period of five consecutive years, with knowledge of such use, may no longer seek invalidation or the prohibition of use of the later mark. In other words, it will have to accept and tolerate the coexistence of the marks concerned.
Finally, it is essential for the holder of a trade mark to scrupulously keep all proof of use such as advertisements, packaging, invoices (it is recommended, if possible, to reproduce the trade mark on the invoice), sales figures, press coverage, participation in trade shows, etc. Indeed, in the event of infringement proceedings, the alleged infringer may first request that the trade mark holder produce proof of genuine use of the trade mark during the five-year period preceding the commencement date of the proceedings. In the absence thereof, the action will be rejected. This rule does not apply to the five-year period immediately following registration of a trade mark since, during this period, there is no sanction for non-use. It is nonetheless recommended to keep a record of proof of use relating to this period.
In brief, these recommendations can be summed up as follows: use, defend and keep proof of use.
