What is the difference between a Benelux trade mark and an EU trade mark?

With a Benelux trade mark you protect your mark in the Netherlands, Belgium and Luxembourg. An EU trade mark applies in all 27 EU member states. The choice depends on where you are active or want to become active. Only active in the Benelux? Then a Benelux mark is often the most efficient choice. Thinking internationally, or do you want to keep room for expansion? Then go for an EU trade mark. You can also combine both registrations. We help you determine the right strategy for your situation.

How long does a trade mark registration take?

A Benelux trade mark registration usually takes 4 to 6 months. An EU trade mark can take 4 to 6 months if no opposition is filed. Do note: these are averages. If someone opposes your mark, the procedure runs longer. Substantive objections from the trade mark office can delay it too. The timescale only starts running after filing, so good preparation beforehand saves time. We make sure your application is right from the outset, so that you do not have to wait unnecessarily long.

What is the distinctive character of a trade mark?

Your mark has to be recognisable and unique for your products or services. You cannot register ‘Fresh Apples’ as a trade mark for a fruit stall, because it simply describes what you sell. But that same name can perfectly well serve as a mark for a clothing shop. The point is that consumers can distinguish your product from those of others. Invented names such as ‘Google’ or ‘Spotify’ have strong distinctive character. Descriptive names such as ‘Fast Delivery’ are harder to register. If you are in any doubt, we check whether your proposed mark can be registered.

When is there trade mark infringement?

Trade mark infringement occurs when someone uses a mark that is too similar to your registered mark without your permission. And no, it does not have to be an exact copy. A strongly comparable mark causes problems too. What do you look at? The marks can be too similar in three ways: They look the same (visually). They sound the same (aurally). They mean the same (conceptually). The crucial question is: can consumers confuse the two marks? Then there is probably infringement. What can you do about trade mark infringement? The options vary. You can start with a cease-and-desist letter, or go straight to interim injunction proceedings. We look with you at whether there is actually infringement, and which legal action fits best.

Do I have to use my trade mark in order to keep it?

Yes. You must make genuine use of your mark within 5 years of registration, for the goods or services for which you registered it. Not using it? Then a third party can have your mark revoked for non-use (non-usus). That means you lose your trade mark rights. Genuine use means actual commercial use in practice, not merely a single token act. So keep invoices, marketing material and photographs that show use. In a dispute it is for you to prove that you have used the mark.

Can I tackle trade mark infringement on Amazon or Bol.com?

Absolutely. If someone unlawfully uses your registered mark on a marketplace, you can take action. Both Amazon and Bol.com have reporting procedures for trade mark proprietors. You can submit a notice-and-takedown request in which you show that your trade mark rights are being infringed. The platform then has to remove the infringing listings. Sometimes a formal notice to the seller is needed, followed if necessary by legal steps. We know exactly how these procedures work and can act quickly to protect your mark.

What does trade mark registration cost, including legal assistance?

The official costs of a Benelux trade mark registration are EUR 244 for one class (product category); an EU trade mark costs EUR 850 for one class. Every additional class brings further costs with it. On top of that come our legal fees for the trade mark search, drawing up the application, communication with the trade mark office and guidance during the procedure. The total investment depends on the complexity of your case. We set out a clear picture of the costs in advance, so that you know where you stand without surprises afterwards.

Can I register a name I have been using for years as a trade mark?

The fact that you have been using a name for years unfortunately does not automatically give you trade mark rights. You can of course try to register that name as a mark, provided it meets the registration requirements (distinctive character, no conflict with earlier rights). Are you using the name in the course of trade? Then you may have a trade name right, which offers limited protection against confusion. But only a trade mark registration gives you the exclusive right to prohibit others from using it. The sooner you register, the stronger your position. We check whether your name is still free and guide the registration.

What if someone files an opposition against my trade mark?

If a third party files an opposition, it means they take the view that your mark is too similar to theirs or otherwise infringes their rights. That is no reason to panic. You are given the opportunity to respond with a defence setting out why your mark can be registered after all. Sometimes you can also negotiate an amicable settlement or limit your trade mark registration to certain classes. The trade mark office ultimately decides. In many cases an opposition can be countered with the right arguments. We take the opposition proceedings entirely off your hands and considerably improve your chances of success.

How do I protect my logo, band name or collection name?

You can protect a logo, band name or collection name by registering it as a trade mark. For a logo you register a figurative mark (the visual design). A band name or collection name you register as a word mark. You can also register a combination: figurative and word together. Choose the classes that match your activities – for a band those are, for example, class 41 (entertainment) and class 9 (sound recordings). A good trade mark registration prevents others from copying your name or logo and gives you legal ammunition in the event of infringement. We advise on the best way to make the protection of your creative work watertight.

Practice areas

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 squatting.

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, more on that 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 apples.

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).
If you do want to use a descriptive mark, because it works well commercially, 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;
considering 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 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 because you add products and/or services, or change the 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 for one class. Every additional class costs extra. 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. What matters is whether 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 cease-and-desist letter to the infringing party, claiming damages before the court or surrender of the profits made by using the mark, or the transfer of the infringing domain name. Other claims are possible too 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 cease-and-desist letter demanding that the infringement be stopped and kept stopped, sometimes coupled with a signed undertaking to refrain from further infringement so as 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 coming too close to your name? You can read more about that on our page on trade name law, and about infringement of a trade name.

When a trade mark becomes a generic term

A mark that is very well known can end up being used so widely for a particular type of product that the name becomes the everyday word for that product. Think of Maxi Cosi, Luxaflex and Glassex. The product category ends up being known by the brand name. That increases the risk of losing the trade mark right. It is important to protect the mark and to keep it from turning into a generic term, so that its value and distinctive character are preserved. You can engage a trade mark watch service to help prevent this.

Trade mark protection does not arise by itself. As trade mark lawyers we have the expertise 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 cease-and-desist letter 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.

All practice areas

Alexandra Iedema

Lawyer

Alexandra advises and litigates for clients in the cultural, music and creative sectors. She acts, among others, for artists, creative professionals, producers and entrepreneurs within these industries.

Merel Teunissen

Lawyer

Merel advises and litigates in the fields of media law, film law, copyright, privacy law, contract law and intellectual property law. She acts for established and emerging media personalities, producers in film, television and podcasts, victims of unlawful publications and creative entrepreneurs.

Frequently asked questions about trade mark law

With a Benelux trade mark you protect your mark in the Netherlands, Belgium and Luxembourg. An EU trade mark applies in all 27 EU member states. The choice depends on where you are active or want to become active. Only active in the Benelux? Then a Benelux mark is often the most efficient choice. Thinking internationally, or do you want to keep room for expansion? Then go for an EU trade mark. You can also combine both registrations. We help you determine the right strategy for your situation.
A Benelux trade mark registration usually takes 4 to 6 months. An EU trade mark can take 4 to 6 months if no opposition is filed. Do note: these are averages. If someone opposes your mark, the procedure runs longer. Substantive objections from the trade mark office can delay it too. The timescale only starts running after filing, so good preparation beforehand saves time. We make sure your application is right from the outset, so that you do not have to wait unnecessarily long.
Your mark has to be recognisable and unique for your products or services. You cannot register ‘Fresh Apples’ as a trade mark for a fruit stall, because it simply describes what you sell. But that same name can perfectly well serve as a mark for a clothing shop. The point is that consumers can distinguish your product from those of others. Invented names such as ‘Google’ or ‘Spotify’ have strong distinctive character. Descriptive names such as ‘Fast Delivery’ are harder to register. If you are in any doubt, we check whether your proposed mark can be registered.
Trade mark infringement occurs when someone uses a mark that is too similar to your registered mark without your permission. And no, it does not have to be an exact copy. A strongly comparable mark causes problems too.

What do you look at? The marks can be too similar in three ways:
- They look the same (visually).
- They sound the same (aurally).
- They mean the same (conceptually).
The crucial question is: can consumers confuse the two marks? Then there is probably infringement.

What can you do about trade mark infringement?

The options vary. You can start with a cease-and-desist letter, or go straight to interim injunction proceedings. We look with you at whether there is actually infringement, and which legal action fits best.
Yes. You must make genuine use of your mark within 5 years of registration, for the goods or services for which you registered it. Not using it? Then a third party can have your mark revoked for non-use (non-usus). That means you lose your trade mark rights. Genuine use means actual commercial use in practice, not merely a single token act. So keep invoices, marketing material and photographs that show use. In a dispute it is for you to prove that you have used the mark.
Absolutely. If someone unlawfully uses your registered mark on a marketplace, you can take action. Both Amazon and Bol.com have reporting procedures for trade mark proprietors. You can submit a notice-and-takedown request in which you show that your trade mark rights are being infringed. The platform then has to remove the infringing listings. Sometimes a formal notice to the seller is needed, followed if necessary by legal steps. We know exactly how these procedures work and can act quickly to protect your mark.
The official costs of a Benelux trade mark registration are EUR 244 for one class (product category); an EU trade mark costs EUR 850 for one class. Every additional class brings further costs with it. On top of that come our legal fees for the trade mark search, drawing up the application, communication with the trade mark office and guidance during the procedure. The total investment depends on the complexity of your case. We set out a clear picture of the costs in advance, so that you know where you stand without surprises afterwards.
The fact that you have been using a name for years unfortunately does not automatically give you trade mark rights. You can of course try to register that name as a mark, provided it meets the registration requirements (distinctive character, no conflict with earlier rights). Are you using the name in the course of trade? Then you may have a trade name right, which offers limited protection against confusion. But only a trade mark registration gives you the exclusive right to prohibit others from using it. The sooner you register, the stronger your position. We check whether your name is still free and guide the registration.
If a third party files an opposition, it means they take the view that your mark is too similar to theirs or otherwise infringes their rights. That is no reason to panic. You are given the opportunity to respond with a defence setting out why your mark can be registered after all. Sometimes you can also negotiate an amicable settlement or limit your trade mark registration to certain classes. The trade mark office ultimately decides. In many cases an opposition can be countered with the right arguments. We take the opposition proceedings entirely off your hands and considerably improve your chances of success.
You can protect a logo, band name or collection name by registering it as a trade mark. For a logo you register a figurative mark (the visual design). A band name or collection name you register as a word mark. You can also register a combination: figurative and word together. Choose the classes that match your activities – for a band those are, for example, class 41 (entertainment) and class 9 (sound recordings). A good trade mark registration prevents others from copying your name or logo and gives you legal ammunition in the event of infringement. We advise on the best way to make the protection of your creative work watertight.