When can something be a trade mark?

In short, a sign must enable the products, goods or services of a business to be recognised and distinguished in order to qualify for trade mark protection.

What can constitute a trade mark?

Under the law, a trade mark includes any sign that serves to distinguish your goods (products) or services. A logo or shape may immediately come to mind, but because the definition is broad, many other signs can also be protected as trade marks. A brief overview:

  • Names and words, such as Coca-Cola, Philips or Fugro;
  • Numbers can also constitute a trade mark, such as 555;
  • Combinations of numbers and words, such as 3M or 7Up;
  • Logos, such as those of Apple, Nike or Shell. Sometimes the graphic representation of a word can itself be a trade mark, as with the Coca-Cola or Ford logos;
  • The shape of a product can also constitute a trade mark, such as the shape of a Coca-Cola bottle (the shape must be specifically recognisable);
  • Colours can also constitute a trade mark where the general public associates them with a particular brand, such as Zwitsal yellow;
  • Sounds, such as the ‘Intel Inside’ sound, can constitute a so-called sound mark. 

Would you like advice on the options for registering your trade mark? Contact one of our trade mark lawyers.

The general rule is: without trade mark registration, you have no trade mark rights.

Register your trade mark

A trade mark is registered by an organisation designated for that purpose by a public authority. In the Netherlands, this is the Benelux Office for Intellectual Property (BOIP). If you want to register your trade mark, BOIP must be able to determine precisely what your trade mark is and which products or services are to be protected. The general rule is: without trade mark registration, you have no trade mark rights.

Distinctive character

To register, for example, your logo or product name (the sign) as a trade mark, the sign must have distinctive character. The public must therefore be able to recognise the trade mark easily. 

Whether your trade mark has sufficient distinctive character is initially assessed by the trade mark office (BOIP). The trade mark office examines your application and then decides whether your trade mark can be registered. 

Your trade mark must not be descriptive

Purely descriptive indications cannot serve as trade marks. You cannot register the word ‘baker’ for a bakery, just as you cannot register Apple for fruit products. Those words describe the products or services without indicating their commercial origin. The position is different where Apple is used for computer products. The distinctive character of a trade mark is therefore determined by the market in which the sign is used. 

Is your trade mark distinctive within your market?

To determine the market in which a trade mark is used, so-called classes have been created. A class describes the type of products or services for which the trade mark will be used. The same principle applies here: Diesel cannot be registered as a trade mark in a class relating to the oil industry, but it is used as a clothing trade mark.

AGREEMENTS ON THE USE OF TRADE MARKS

Trade marks are often commercially exploited in practice. Examples include granting licences, working with distributors or carrying out joint marketing under a trade mark. 

Our lawyers advise on agreements relating to trade marks, including licence agreements, distribution agreements, agency agreements, co-branding arrangements and other forms of collaboration. We assist with drafting, reviewing and negotiating these agreements so that it is clear how a trade mark may be used and by whom.

Help! My trade mark is being copied

Trade mark infringement

If you own a trade mark, you can prohibit others from using or copying it. The clearest form of infringement of your trade mark rights occurs where another party uses your trade mark verbatim as a sign for the same goods or services. An example is counterfeit branded clothing. You can prohibit such use.

Something looks too much like your trade mark: confusion!

A second ground for prohibiting the use of a sign is where there is a likelihood of confusion. After all, you have a trade mark in order to distinguish your product. If another party uses a sign that closely resembles your trade mark, there may be a likelihood of confusion. This is the case where the public is unsure whether a product originates from you or from your competitor. Where there is confusion, you can therefore seek to prohibit use of the sign. For example, the detergent brand Oma may be too similar to the detergent brand Omo.

Unfair advantage and detriment

If you have a well-known trade mark, another party may try to benefit from your success. By associating a product with a well-known trade mark, that party may take unfair advantage of the trade mark. You can also seek to prohibit this form of trade mark infringement. 

Finally, a particular sign may be detrimental to your trade mark. For example, use of the sign ‘Klarein’ for a cleaning product may be detrimental to the trade mark ‘Clareyn’ for genever.

Our lawyers advise on all aspects of trade mark law. Among other things, we assist with trade mark registrations, investigate potential conflicts with earlier trade marks and act in cases of trade mark infringement. 

We also represent clients in proceedings before trade mark offices and courts, for example in matters concerning the grant and validity of trade marks, opposition proceedings against trade mark applications and disputes concerning trade mark infringement. 

Are you unsure whether your trade mark is sufficiently protected, would you like to register a trade mark, or is there a dispute concerning a trade mark? Please feel free to contact our trade mark lawyers.

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FREQUENTLY ASKED QUESTIONS 
ABOUT TRADE MARK LAW

Do I need to register a trade mark to obtain trade mark rights?

Yes. Unlike copyright, for example, trade mark rights generally arise only once the trade mark has been registered with a trade mark office, such as the Benelux Office for Intellectual Property (BOIP).

How long does a trade mark remain valid?

A trade mark registration is valid for ten years from the registration date. The registration can then be renewed for successive periods of ten years.

What can I do if someone uses my trade mark?

If another party uses, without permission, a sign that is identical or similar to your trade mark, this may constitute trade mark infringement. In that case, you can demand that the other party cease using the sign and, where appropriate, claim damages.

Can I object to the registration of a trade mark?

Yes. If a trade mark is applied for that is too similar to your trade mark and covers the same or similar goods or services, you can initiate opposition proceedings before the trade mark office. This allows you to seek to prevent the trade mark from being registered.

Can I use a trade mark that resembles another trade mark?

That depends on the degree of similarity and on the products or services for which the trade mark is used. If there may be a likelihood of confusion among the public, use of the trade mark may be prohibited.

How much does it cost to register a trade mark?

The cost of registering a trade mark depends, among other things, on the territory in which you want protection, for example the Benelux or the European Union, and on the number of classes in which the trade mark is registered. In addition to the official fees charged by the trade mark office, there may also be costs for legal advice or a trade mark search.

Can I register a trade mark myself?

Yes, it is possible to file a trade mark application yourself with a trade mark office, but this is strongly discouraged. A trade mark lawyer can properly assess whether the trade mark has sufficient distinctive character and whether earlier rights exist. If a trade mark is too similar to an existing trade mark, this may lead to opposition proceedings or a trade mark infringement dispute.

Can I use a trade mark that is not registered?

In principle, you can use a name or logo without registering it as a trade mark. Without registration, however, you will generally have no trade mark rights and will be less able to prevent others from using a similar trade mark. You also run the risk that your name conflicts with an existing trade mark. It is therefore advisable to investigate in advance whether the trade mark already exists and to consider registering it.

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