What does it cost to register my trade mark outside the Benelux as well?

An EU trade mark covering all 27 EU countries costs €850 at the European Union Intellectual Property Office (EUIPO) for one class, €50 for the second class and €150 for each class above that (Annex I to the EU Trade Mark Regulation). If your label protects clothing and bags, you pay €900 for those two classes together. For countries outside the EU, you apply for an international registration under the Madrid Protocol. The basic fee at the World Intellectual Property Organization (WIPO) is CHF 653 for a mark in black and white and CHF 903 for a mark in colour, plus a fee that differs from country to country (WIPO fees since 1 February 2023). The cost of a prior search for earlier marks in those countries comes on top.

My trade mark has been registered in the Benelux for two years. Can I still extend it to the whole EU?

You can, but the six months of priority after your Benelux application have passed. Your EU trade mark therefore gets the date on which you apply (Article 34 of the EU Trade Mark Regulation). If someone else has registered a similar mark in an EU country in the meantime, they can oppose your application (Article 8). You can take your Benelux mark with you, though. Claim its seniority when you apply or within two months afterwards (Article 39). If you later let the Benelux mark lapse, you keep the same rights in the Benelux as if it had stayed on the register. You then no longer have to renew the Benelux mark.

Building an IP portfolio

An IP portfolio is the full set of intellectual property rights held by a business, such as trade marks, designs and copyright, with the holder of each right and the territory in which it applies.

For a young label, that is often a Benelux trade mark in the founder’s name, a handful of designs that only exist on Instagram and a domain name a friend once registered. That works until a distributor in Germany comes along or an investor wants to come in. Then someone wants to see in black and white what you own and whose name it is in.

At Liaise we build IP portfolios for fashion brands, designers, design labels and manufacturers. We start with what you want to do over the next few years, because that decides which right you need where.

About to expand across the border, grant a licence or raise investment? Call 020 675 88 21 or get in touch. You will have a reply within one working day.

Mapping your IP rights

A portfolio starts with a list. Write down everything that makes your brand recognisable or that someone else would want to copy: the name, the logo, the print that comes back every season, the shape of your bestseller, the campaign images and the website.

For each item, check which right protects it. The name and logo only become a trade mark once you register them (Article 2.2 of the Benelux Convention on Intellectual Property, BCIP, in Dutch). A design can be filed as a registered design and is often protected by copyright as well, which arises automatically. Under protecting a clothing design you can read how those rights work together for a garment.

Your plans decide what you register. If you want to sell bags under your name in a few years’ time, do not register the trade mark for clothing alone. A trade mark only covers the goods it is registered for and bags sit in a different class from clothing in the international classification. If you want to license a design, you want it on a register, because a licensee or investor will ask for a registration number.

Often missing from the list are the name of the business itself, the trade name, and the domain names and accounts you sell through. Add them, if only to know whose name they are in.

Whose name your trade marks and designs are in

At many labels the trade mark is still in the founder’s name, because the filing came before the company existed. Nobody notices until an investor, buyer or bank puts the register next to the Chamber of Commerce extract.

If you transfer the trade mark to your company, put the assignment in writing, because an assignment of a Benelux trade mark that is not in writing is void (Article 2.31(2) BCIP). For an EU trade mark the regulation requires a deed signed by both parties (Article 20(3) of the EU Trade Mark Regulation). Against third parties the assignment only counts once it has been entered in the register (Article 2.33 BCIP, Article 27 EU Trade Mark Regulation). The same rules apply to designs (Articles 3.25 and 3.27 BCIP, Articles 28 and 33 of the EU Design Regulation).

Designs by freelancers belong in that check too. Depending on the type of right and what has been put on paper, the rights are already with your company or still with the designer. Under assigning copyright you can read how to arrange that.

International trade mark registration or an EU trade mark when your brand crosses the border

A Benelux trade mark covers the Netherlands, Belgium and Luxembourg. If you sell through a showroom in Paris or a distributor in Germany, that trade mark gives you no rights there.

For the EU, the EU trade mark is the obvious choice. It is one right for all member states at once, which also means that a declaration of invalidity applies to the whole Union straight away (Article 1(2) EU Trade Mark Regulation). You can then have the EU trade mark converted into national applications for the countries where the objection does not apply, keeping the original date (Article 139).

Outside the EU, for example in the United Kingdom, the United States or Japan, an international trade mark registration runs through the Madrid Protocol. You build it on your Benelux or EU trade mark and designate the countries where you want protection.

Watch the first five years under Madrid. If your base mark is lost in that period, for example through an opposition, the international registration falls away in every designated country (Article 6(3) Madrid Protocol). Within three months you can file a national application in each country that keeps the original date (Article 9quinquies), but you then pay fees again in each country.

Timing matters. After your first application you have six months of priority. If you apply for the same trade mark within that period in another country that is party to the Paris Convention, the date of your first application counts (Article 4 Paris Convention, Article 34 EU Trade Mark Regulation). The same six-month period applies to a design (Article 41 EU Design Regulation). If you already know at your first application that you will cross the border within six months, plan the second application straight away.

Under trade mark law you can read how to apply for a Benelux trade mark and what it costs.

Extending a trade mark to new products or a new logo

You cannot update a registered trade mark. The sign stays as you registered it, including at renewal after ten years (Article 2.9(2) BCIP, Article 54 EU Trade Mark Regulation). For an EU trade mark the list of goods can only be narrowed after filing (Article 49). A refreshed logo or a new product category therefore usually means a new application.

Registering as broadly as possible at the start does not solve that. If you have not made genuine use of a trade mark for the goods it is registered for five years after registration, someone else can have it revoked for those goods (Articles 2.23bis and 2.27(2) BCIP, Article 18 EU Trade Mark Regulation). A registration for a fragrance line that never materialises mostly buys false security.

That is why a portfolio needs maintenance. Trade marks run for ten years and designs for five, with their own renewal dates and renewal fees at each office. Keep them in one overview, with the holder of each right, the classes and what you actually use them for.

Recording collaborations and licences in the register

A capsule collection with another brand, an eyewear line under your name made by a licensee or a manufacturer allowed to put your logo on packaging. In each case you allow someone else to use your trade mark. That is a licence.

Set out in the licence which products, which territory and how long. If a licensee goes beyond one of those limits, you can invoke your trade mark rights (Article 2.32(2) BCIP, Article 25(2) EU Trade Mark Regulation). Then have the licence recorded, because only then does it have effect against third parties (Article 2.33 BCIP, Article 27 EU Trade Mark Regulation).

More about the trade mark licence →

IP due diligence when an investor or buyer comes in

In IP due diligence an investor or buyer first checks whether every trade mark and design is in the name of the company receiving the money and whether its use matches the registration. Then come the contracts, such as licences, collaborations and agreements with freelancers and factories.

A trade mark in the founder’s name is usually not a deal-breaker, but it has to be transferred before closing. Leave it until the last week and closing depends on a deed and a registration that are not in your hands.

If the money comes from a bank or other lender, it may ask for a pledge over your trade marks, because a trade mark can be pledged separately from the business (Article 2.32bis BCIP, Article 22 EU Trade Mark Regulation). That pledge also only has effect against third parties once registered (Article 2.33 BCIP).

If you are on the selling side, run that check before the other party does, so that any assignment is already on the register by the time the buyer asks.

A lawyer who reviews and builds your IP portfolio

We start with an overview of what you have, with the holder and expiry date of each right. We then set your plans for the coming years against it, such as a new country, a product line or an investor. Sometimes that leads to an EU trade mark or an international registration, sometimes just to the transfer to the company that should have happened years ago. Because we at Liaise also draft the contracts, we take the licence or investment agreement that goes with it on board straight away.

More about intellectual property →

Want to know what your IP portfolio needs for the next step? Get in touch or call 020 675 88 21.