Trade mark law
Trade mark law protects signs, names and logos that distinguish your products or services from those of others. We help you with registration, opposition proceedings and enforcement against infringers or trade mark hijacking.
Trade mark law is an intellectual property right. If you register a trade mark with a trade mark office, others may only use it with your permission as the proprietor. A trade mark registration therefore allows you to prohibit others from, among other things, using your trade mark (or something too similar to it) for products or services for which you registered it (or, if it is a “well-known” mark, for other, non-comparable products or services as well, on which more below).
What is a trade mark?
A “trade mark” is a sign (usually consisting of letters and/or a logo) that is registered with a trade mark office. A trade mark can also be a colour, a shape, a sound or a number.
A trade mark does have to be sufficiently distinctive. If a trade mark does not have enough distinctive character, it will be refused by the office where you register it. So it is not possible to register, for example, “dog” or “table” as a trade mark. Take the trade mark “Apple”. “Apple” does have distinctive character for electronics and so on, but not for an apple.
When does a trade mark have distinctive character?
A trade mark may not be descriptive of products and/or services, it may not be understood as an indication of the origin, quality or characteristic features of its products and/or services, and it may not be contrary to public morality (for example, it may not discriminate or offend).
Suppose you would really like to use the descriptive trade mark after all (because it works well commercially, say), then you could add a creative logo, so that you at least have protection for that logo. The logo, of course, may not be descriptive either.
So when brainstorming a trade mark, think carefully about how distinctive it is. As trade mark lawyers, we can help you with that.
How can you register a trade mark?
Unlike copyright, trade mark law does have a formal requirement, namely registering a trade mark in the trade mark register. With the help of a trade mark lawyer you can register the mark in the Netherlands, Belgium and Luxembourg with the Benelux Office for Intellectual Property (BOIP), in Europe (the EU trade mark) with the European Union Intellectual Property Office (EUIPO), and in countries worldwide with the World Intellectual Property Organization (WIPO). With an application for an EU trade mark you obtain protection for all 27 EU countries at once. With an international application, it is examined in each country separately. You can choose to file a trade mark application for one country, but also for fifteen. For an international registration you always need a basic trade mark registration (Benelux or EU).
The main purpose of a trade mark registration is to prohibit others with a new mark from, among other things, using your trade mark (or something too similar to it) for the products and services for which you registered your mark. After all, you register a trade mark for specific products or services.
Registering a trade mark is certainly not always simple. There are a number of steps that have to be followed:
- choosing the right trade mark;
- choosing the right category of products or services;
- choosing the right description of the products and/or services;
- researching whether that mark (or something similar to it) has already been registered for similar products and/or services;
- researching whether that mark (or something similar to it) has already been registered for other products and/or services but is a well-known mark and causes confusion;
- consideration must be given to which products and/or services the mark will be used for in the future (the coming five years).
What can a trade mark lawyer do for you in trade mark law?
As trade mark lawyers, we can determine together with you in which classes (categories) the mark should be registered and how the descriptions of the products and/or services should read. Besides the question of what you want to do with the mark, we also address the preliminary question of whether this is legally allowed. In other words: can it be registered, and does the mark not infringe the rights of others? Our trade mark lawyers are experienced in assessing this in advance by carrying out a careful search.
How long does a trade mark registration last?
In principle, in most countries a trade mark registration is valid for ten years from the date of the application (we call this the filing date). After those ten years the registration can be renewed for another ten years. You do then pay renewal fees. It is possible to renew an unlimited number of times, but note: you must make genuine use of the mark.
Bear in mind that in certain countries something slightly different applies.
Can you also lose a trade mark registration?
Yes, you can lose your trade mark registration if you have not made “genuine” use of the mark for more than five years. Genuine use means actually using a mark for the goods and services for which the mark is registered. If you do not make genuine use of the mark within five years in the territory for which you registered it, the mark can be declared revoked. The lack of genuine use of the mark can also be used against you in opposition proceedings. Opposition proceedings are proceedings by which you, as the proprietor of an (earlier) mark, can object before a trade mark authority to the registration of a newer mark.
It is advisable to file a new trade mark registration if your mark changes too much, for example additional products and/or services or an amended logo.
What are the costs of trade mark registration?
The costs of registering a trade mark consist of the costs of filing the mark and the costs of legal assistance from a trade mark lawyer.
An application for a trade mark registration in the Benelux costs EUR 244 for one class, and an EU trade mark registration costs EUR 850 per class. With an international trade mark registration, the costs can vary considerably from country to country. You pay the costs directly to WIPO. These include the cost of BOIP forwarding the application to WIPO (EUR 84), the basic fee for an international trade mark registration and the fees for the trade mark registration in the country concerned.
What can you do about trade mark infringement?
Trade mark infringement is when others use or misuse a registered mark (or a mark or trade name that resembles it) without the permission of the trade mark proprietor. The point is that use of the other mark can cause confusion among consumers. Think of the example of Ajax the football club and Ajax the cleaning product. Even though it is the same name, the marks can coexist because no confusion is caused.
If someone infringes your trade mark, we can help as trade mark lawyers with how to deal with it. This may include starting opposition proceedings before one of the trade mark authorities, sending a letter of claim to the infringing party, claiming damages before the court or payment of the profit made by using the mark, or the transfer of the infringing domain name. There are yet more claims possible in cases of trade mark infringement, such as: the destruction of the infringing products and the publication of a rectification. It is usual to start with a letter of claim demanding that the infringement be stopped and kept stopped, sometimes accompanied by a declaration to cease and desist (onthoudingsverklaring) to avoid proceedings.
Someone accuses you of trade mark infringement — what now?
If someone accuses you of infringement, it is wise to engage us as trade mark lawyers. We will then carry out an investigation to assess whether there is trade mark infringement and how to deal with it further. We can send a letter in reply, negotiate and/or defend you in proceedings.
Trade name or trade mark: what is the difference?
A trade name is the name under which you run your business. That protection arises automatically through use in the course of trade, without registration and without the name having to be distinctive. A trade mark is something else. You register it for certain goods or services to distinguish your products from those of competitors. A trade name and a trade mark can coincide, however, for example if your products bear the same name as your company.
Would you like to know how to protect your trade name, or to act against someone who is creeping too close to your name? You can read more about that on our page on trade name law.
What is trade mark dilution?
Because of great renown among the public, it is possible for a trade mark to be used so often to denote a particular type of product that the name becomes a synonym for the generic name of the product. Think of Maxi Cosi, Luxaflex and Glassex. A type of product becomes, as it were, commonly known under the trade mark. Trade mark dilution increases the risk of losing the trade mark right. It is important to protect the trade mark and to prevent it from becoming diluted, in order to preserve the value and distinctive character of the mark. You can engage a trade mark watch service to prevent dilution.
In conclusion, protection of a trade mark does not arise by itself. As trade mark lawyers we have all the knowledge in house to assist you with, among other things, the registration of a mark, or when you want to act against an infringement, or when you have (allegedly) infringed an earlier mark yourself.
Trade mark lawyer in Amsterdam
Our office is located on De Lairessestraat in Amsterdam-Zuid, in the heart of the city’s creative and business sector. From here we advise and litigate for entrepreneurs, creatives and companies throughout the Netherlands, with a strong base in the Amsterdam region.
Why a trade mark lawyer in Amsterdam?
Amsterdam is the centre of the Dutch creative industry, fashion, tech and media. It is precisely in these sectors that trade mark protection is essential. Whether you are a startup wanting to protect a trade mark, an established company faced with counterfeiting, or a creative agency wanting to safeguard its visual identity: we know the market and the players.
Trade mark cases in the Netherlands are heard by The Hague District Court, which has exclusive jurisdiction over EU trade mark disputes. For Benelux marks, the Amsterdam District Court may also have jurisdiction. We have extensive experience litigating before both courts and know which route is most effective in your situation.
Trade mark lawyers – a selection of our recent work:
- Proceedings for a trade mark proprietor against an infringer.
- A letter of claim sent on behalf of a trade mark proprietor to an infringer.
- Drawing up a coexistence declaration for the parallel use of two marks.
- An availability search prior to the registration of a mark.
- Determining the goods and services for which a mark should be registered.
- Assisting a trade mark proprietor accused of trade mark infringement.
