Trademarks

 

 

Trademark registration procedure outlined

 

 

Via the hyperlinks hereunder, user-friendly tables explain the standard procedure for a Benelux, European and international trademark registration. From a chosen filing date, a standard procedure is presented in detail, including an indication of the official fees, from the application date until the issuance of the registration certificate.

 

Obviously, these standard procedures do not provide conclusive advice, but the tables provide a general overview of the procedures.

 

Benelux

EUTM-European Union

International

 

Hereunder some explanations are given as to

  • The costs
  • What is a trademark?
  • Registration
  • Rights/Benefits
  • Obligations
  • How to register?
  • Where to register?

 

 

 

What are the costs?

 

 

Since a registered trademark represents a measurable value for your company, registration is an investment rather than a cost.

 

In order to prevent your investment from becoming a heavy cost item, it is advisable to check as early as possible in the development phase whether the trademark can actually be registered and used. If such a search is conducted at a later stage or is not conducted at all, you can loose much time and money if you are obliged to change your trademark and to invest in the marketing of a new mark. The search costs involved will depend on a number of factors, including the geographic area in which you wish to use and register your trademark.

 

At Benelux level, a comprehensive investigation of a trademark will cost about €500 to €700 and at European level a limited investigation can be conducted from about €400.

 

The registration itself often covers a period of ten years, without annual maintenance fees. At Benelux level this will entail costs as from €565, at European level as from €1,350.

 

Registering trademarks requires a relatively limited investment, in particular when compared with marketing costs, packaging production costs, etc. However, asserting trademark rights against imitation or counterfeiting may entail a considerable investment, although this can often be limited by taking expert advice and timely appropriate action.

 

 

 

What is a trademark?

 

 

A trademark is any sign that distinguishes the products or services of one company from those of other companies. In addition to names, logos, packaging layouts, shapes (e.g. Coca-Cola® bottle) and combinations of these elements can also be trademarks as consumers may perceive these signs as an indication of the origin of the products. Even sounds (e.g. Nokia® tune) and colours can be trademarks.

 

The main requirement is that the public must perceive these signs as referring to the origin of the products/services and e.g. not just as mere decoration.

 

The other main qualifying conditions are as follows:

  • trademarks must not be purely descriptive terms for the products in question, e.g. 'Belgian chocolates' for particular chocolates, 'super white' for a detergent, 'bio kill' for an insecticide, 'medbiz' for a medical journal, etc.
  • the trademark must be available and must not infringe existing rights.


Brantsandpatents can help you from the very beginning of developing a product and trademark. We can think along with you, having regard to the validity conditions. On the basis of our expertise, we can help you develop a strong trademark and carry out appropriate investigations to ensure that your trademark can be used and registered without any problems.

 

 

 

Registration 

 

Registering a trademark is a legal prerequisite to claiming protection of the trademark. Without registration:

  • you cannot oppose imitation or counterfeiting;
  • third parties with a registration can oppose your trademark, even if you are the very first user.

 


Please note: before registering, you are strongly advised to have a search carried out to ascertain whether or not your trademark infringes any existing rights of other companies. Without a preliminary investigation, you have no way of knowing whether you can safely use and register your trademark.

 

Registration amounts to more than just submitting a form, as it determines the extent to which your trademark will be protected. Are you registering a brand name or a logo, in colour or black&white, for a wide range of products/services or not? Brantsandpatents can help you to make the right choices.

 

 

 

Rights/Benefits

 

 

 As the owner of a trademark registration:

  • You enjoy for a period of ten years (renewable without limit for additional ten-year periods) an exclusive right to the trademark with regard to the products claimed; you may also use the ® symbol in connection with the trademark;
  • You hold a property right that forms part of your company's intangible fixed assets; you can therefore appraise the trademark, license it or sell it;
  • You can take legal action to prevent imitation or counterfeiting, in particular against similar trademarks which have been used and/or registered for similar products or services;
  • You discourage third parties from registering or using a similar trademark.


Please note: in most jurisdictions, the public authorities do not intervene in conflicts between trademarks, without any initiative of the owner. Accordingly, you have to enforce your trademark rights, in close cooperation with your consultant, through the appropriate procedures.

 

In general it is important to take action against similar trademarks at the earliest possible phase, as on the one hand the chance of a amicable settlement will be greater and on the other hand the financial costs will usually be much lower.

 

Brantsandpatents can watch over your trademarks and advise you whether and when to assert your trademark rights. We also have considerable experience and legal expertise to assist you in negotiations and legal action.

 

 

 

Obligations

 

 

In order to maintain your trademark rights and exclusivity, you should:

  • renew registration in time (usually every ten years), with payment of renewal fees;
  • use the trade name within five years of registration and never cease its use for a period of five years;
  • prevent your trademark becoming a generic name;
  • preferably, also take action against the use or registration of similar trademarks for similar products.

 


Brantsandpatents will keep track of all the deadlines and notify you in time when you need to take action.

 

 

 

How?

 

 

Trademarks are registered with a specific public authority. When registering, you need to identify the trademark (where appropriate, with an appropriate representation), indicate the products and services for which you want protection (in accordance with a particular classification) and specify who is to become the owner of the trademark (natural or legal person). The time line for registration procedures shows the various phases of the procedure.

 

Brantsandpatents ensures that your trademark is registered and monitored properly.

 

 

 

Where?

 

 

There is no global registration system and usually you have to register country by country. However, there are important exceptions to this rule:

  • Benelux: Belgium, the Netherlands and Luxembourg have fully unified trademark legislation and form as it were one single country as regards trademark law.
  • European Union: you can register a European Union trade mark (EUTM, formerly known as Community trademark / CTM), valid for all member states of the European Union, with a specific European authority, the European Union Intellectual Property Office, formerly known as the Office for the harmonisation of the internal market. Protection is afforded by European trademark legislation;
  • the international Madrid System: on the basis of one single application, a trademark can be registered for various countries at the same time, with the possibility of choosing à la carte among the approximately 90 member states of the system; the trademark authority of each country claimed will then determine on the basis of its national legislation whether your trademark is eligible for registration.


After the first registration of a trademark in a particular country, you have a priority period of 6 months to apply for a corresponding registration in other countries. Applications filed by others during this period, cannot be invoked against your application.


This priority right is of substantial importance in intellectual property law and should in fact be claimed explicitly.

 

When deciding under which system you will register your trademark, you will have to consider various factors such as the level of investment and the legal and practical pros and cons of each system.


Brantsandpatents has the necessary knowledge of registration systems worldwide to help you take the right decision.


For foreign national registration procedures, Brantsandpatents is supported by a network of correspondents who have been carefully selected on the basis of quality, efficiency and cost.