A trade mark is a sign that distinguishes your goods or services from those of others: a name, a logo, a shape, sometimes a colour or a sound. Unlike copyright and trade name rights, a trade mark right does not arise by itself. It has to be registered.
Legal basis
For the Benelux the governing instrument is the Benelux Convention on Intellectual Property, with registration through the Benelux Office for Intellectual Property. For protection across the Union you file an EU trade mark with the EUIPO under Regulation 2017/1001. Article 2.20 of the Convention gives the proprietor the right to act against use of an identical sign for identical goods, against use likely to cause confusion, and, for marks with a reputation, against use that takes unfair advantage. Article 2.2bis excludes signs that are descriptive or devoid of distinctive character. A registration lasts ten years and can be renewed indefinitely.
How it works in practice
After filing, the office publishes the application and an opposition period of two months runs, during which holders of earlier rights can object. Anyone filing a mark is well advised to have a search for earlier rights carried out first; that costs considerably less than an opposition or an injunction later. If the mark is not used for five years, a third party can have the registration revoked.
Where it goes wrong
Three points recur. First, the choice of classes: protection extends only to the goods and services specified. Second, the mark that is too descriptive, which is refused or later found invalid. Third, the mark registered in a director’s name rather than the company’s, which causes trouble when the business is sold.
Related terms
Trade mark law connects to trade name law, to the domain name dispute and to the licence agreement.
Want to register or enforce your mark? Our IT lawyers handle the filing and the opposition.
