03-07-2023

This is how you protect your intellectual property | Part 3 | Trademarks: Distinguish yourself from others

This third article in the series 'This is how you protect your intellectual property' looks at trademarks and trademark law.

The use of a trademark allows a company to distinguish its products and/or services from those of other companies. The trademark helps customers recognise the products and/or services as coming from a particular company. A trademark may embody much goodwill, and is as such of great value to a company. Commonly known and, therefore, valuable trademarks include Nike, Coca-Cola, Apple, Mercedes Benz and Google. Given that good trademarks represent much value, it is essential that they are protected against counterfeiting or unlawfully latching on to the trademark's reputation. This generally requires trademarks to be registered. In most countries, only the owner of a registered trademark can challenge counterfeiting or unlawfully latching on.

Trademark holders may act against identical signs for the same products, but also against similar signs, which creates a broad scope of protection around a company's trademark.

The trademark
A trademark is considered to be any sign that is used to distinguish the goods and services of a company. This may include names, drawings, letters, numbers, shapes of goods or packaging and even sounds and scents.

Because a brand name is used to distinguish a company's products and services from those of its competitors, a trademark cannot be merely descriptive, but must have distinctive character. It must also be a specific sign. An application for something indefinite will not be approved. An example was the trademark application for the Dyson vacuum cleaner brand, which referred in a general and abstract manner to all conceivable forms of transparent dust collection containers.

Different types of marks can be distinguished:

Figurative marks: Logos and labels, including, for example, words in a special typeface or special layout, known as figurative word marks.
Word marks: The name under which a product or service is marketed.
Colour marks: A single colour or a combination of colours, e.g. Shell red/yellow, KPN green and Camping Gaz blue.
Shape marks: The shape of a product or packaging can also be a mark. Think, for example, of the Tripp Trapp chair.
Sound marks: An advertising jingle can be so well known that the public knows what it is about as soon as they hear it. In such a case, it can be registered in the form of a stave that is protected as a mark.
Olfactory marks: An example of an olfactory mark is PLAY-DOH clay from Hasbro, i.e. the scent of the clay. For such a mark to be registered however, the scent must be capable of being described precisely and clearly.

Marks can further be divided into individual marks and collective marks. An individual mark is a sign that is used to distinguish products or services of an individual company. By contrast, a collective mark aims to distinguish one or more characteristics shared by goods or services that originate from different companies. Their main purpose is to provide a warranty sign of collective quality, such as KEMA-KEUR, Fairtrade or Beter Leven.

A registered trademark is a property right and can as such be sold separately from a company. A trademark can additionally be licensed, wholly or partly, to a third party. For example, it is common practice for manufacturers and franchisors to grant distributors/franchisees a trademark licence that is limited in terms of territory and/or product types.

Obtaining a trademark right
A trademark application can be filed for the Benelux territory with the Benelux Office for Intellectual Property (BOIP), or for the whole of the European Union, with the European Union Intellectual Property Office (EUIPO). In addition, the Madrid Agreement and the additional Madrid Protocol allow for international registration of a trademark. With an international registration, the trademark enjoys protection in more than 80 contracting states. An international registration requires an underlying registration as a national trademark with a national trademark office, a Benelux mark with the BBIE or a European Union trademark with the EUIPO.

You may file an online application for a Benelux or European Union trademark directly with the BOIP or EUIPO. However, this involves a higher chance of denial or opposition, and it could therefore be wise to have the application filed by a trademark agent.

The BOIP or EUIPO will examine the trademark application that has been filed on formal and absolute grounds. If those aspects are in order, the trademark application will be published. From that date, an opposition period starts to run of two months in case of a Benelux trademark, or three months in case of an EU-trademark.

During the opposition period, holders of earlier rights can file an opposition. Note that this does not only apply to holders of Benelux or EU-trademarks, but that opposition can also be filed by holders of national trademark rights or other rights, such as copyrights, trade names and rights based on unlawful competition.

After any oppositions have been decided or settled, which happens in 80% of cases, the BOIP or EUIPO can proceed to registering the trademark.

Trademark protection can also be obtained in countries that are not members of the aforementioned treaties. In that case, the trademark application and filing must be done separately in accordance with the national procedures of the relevant country.

The right to a trademark
The holder of a right to a trademark has an exclusive right to use that trademark to distinguish its goods and services from those of others. Under the European Union Trademark Regulation and the Benelux Convention on Intellectual Property, an infringement on the rights of the trademark holder may occur in the following cases:

where a sign is identical to the trademark and is used in the course of trade for the same goods or services as those for which the trademark is registered;
where a sign is similar to the trademark, and that sign is used in the course of trade for identical or similar goods or services, if as a result there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark;
where a sign is identical or similar to a trademark that is (has become) well known, and such use takes place without due cause and thereby takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark;
where there is other use of the sign corresponding to the trademark which takes advantage of or is detrimental to it.

The trademark holder may claim damages from the infringer but may also claim surrender of the profits enjoyed. The surrender of profits derived from the infringement can be a particularly effective sanction for trademark infringement. At the request of the trademark holder, the court may also order surrender to the trademark holder of the goods infringing the trademark rights and, in appropriate cases, the materials and implements used in to manufacture those goods.

Extinction of the right to a trademark
The right to a trademark may become extinguished by being declared null or because it expires. The grounds on which actions can be brought are different and so are the legal effects. An action seeking a ban concerns the mark as actually used; an action seeking nullity involves the mark as registered.

Voluntary cancellation or expiry of the registration of the Benelux or EU trademark will cause the trademark right to expire. The registration of a Benelux or EU trademark is valid for ten years. It can be renewed for further periods of ten years without limitation. The right to the trademark will expire by operation of law if the proprietor does not renew it.

The expiration of legal protection in the country of origin will cause the protection of the international registration to also expire. Cancellation of the international registration may be requested at any time. An international registration is valid for ten years. Renewal for another ten years is also possible without limitation. If the proprietor does not renew the registration, the right to the trademark expires by operation of law. It is also possible for the proprietor to waive his right for the Benelux area. Expiration in the country of origin (within five years after international registration) will cause the international registration to expire.

These two grounds of expiration take effect by operation of law and need not be invoked.

A trademark holder may also claim annulment of a later trademark right that the trademark owner believes infringes its trademark right.

In addition, a right to a trademark may expire if that trademark was duly acquired but later becomes the common name to denote the product, and thus the generic name, in normal language due to the actions of the trademark holder. To name a few examples of evolution to a generic name (in the Netherlands): claxon, cellophane, pianola, Vaseline, butagas, hansaplast, gramophone, linoleum, Melba (all former trademarks) and perhaps soon: Dust Buster, Luxaflex and Spa.

Finally, a right to a trademark may expire if the trademark owner does not make genuine use of it. The law has set the following criterion for this: The trademark expires if during a continuous period of five years, either the trademark holder, or a third party (such as a licensee) acting with the holder's consent, fails to make genuine use of the trademark without a valid reason within the Benelux territory, or in the case of a an EU trademark, within the European Union, for the goods for which the trademark has been registered.

Expiration on these grounds must be claimed in court.

If you have any questions after reading this article, please do not hesitate to contact us.

Article series: This is how you protect your intellectual property

For virtually every company, intellectual property such as inventions, trademarks, designs and copyrights represent significant value. To protect that value, it is important that you properly protect the intellectual property developed by your company both nationally and internationally to prevent its misuse.

The article series, 'This is How You Protect Your Intellectual Property', aims to give you insight into key intellectual property rights, how to protect them nationally and internationally, and how to enforce them. A new instalment in the series below will appear monthly on this website.

This is how you protect your intellectual property: