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Trademark protection

A trademark is protected through a trademark application in the Trademark Register in the country in which protection is desired. Through the registration of a trademark action can be taken against the use of any identical trademark or any similar sign if this use is for identical or similar goods or services and confusion is likely on the part of the public.

It applies to most countries in the world that use does not constitute trademark rights. Thus in principle it can be said that without a registration it is impossible to prohibit infringing use of third parties!

 

What is a trademark?

A trademark is any sign which is able to distinguish the goods and services of a company, under the condition that is can be presented in a graphical way.

Thus a trademark is a word, a name of a company, a device, a typeface, a colour, a sound, the shape of a packaging, the shape of a product etc.

A trademark on itself is not protected. An application in a trademark register is necessary for that. We call that a trademark application. In which register a trademark application needs to be filed? In the trademark register of the country in which protection is desired. The trademark register exists by the sake of the law. It is an official register. In The Netherlands the applicable law is: The Benelux Treaty for Intellectual Property. In this Treaty it is determined that the valid register is the Benelux Trademark register. The civil servants that are responsible for the register are working in The Hague at the Benelux Office for Intellectual Property (BOIP).

After the filing of a trademark application the trademark registration procedure starts. During this procedure some essential decisions will be made, e.g. if the trademark is a distinctive sign and not just a description. If the trademark has succesfully gone through all examinations, it will be registered in the trademark register.

From the moment of registration the proprietor of the trademark could prohibit the use of any identical or similar sign if used for identical or similar goods or services and a likelihood of confusion may arise on the part of the public. The trademark registration is from that moment on a trademark right. This trademark right can be invoked before of the court.

 

A misunderstanding erased:

Sometimes people think that by just using a trademark they have created rights, e.g. because they have claimed the domain name. In most countries of the world a trademark must me registered in order to establish rights: use of a trademark without registration does not constitute rights. So without a trademark registration you cannot prohibit the use of your trademark by others. (There are some exceptions on this rule and we are pleased to advise you in your particular case.)

 

Be aware!

Nowadays there are parties that offer to file your trademark for a very small amount of money. The question is however what kind of service those companies offer. The added value is often minimal. And furthermore: internet has the positive effect that a lot of information is easy to acquire. This however does not mean that you can make the right choices. In the past fifteen years the transparacy of the trademark registration procedure has increased, but the legislation and case law has become much more complex. Are you capable to make the right choices? We advise to seek for advice from a trademark attorney.

 

Finally..

And then last but not least: having a trademark registered is not the same as buying a bread at the bakery: it is the acquisition of a right. Bear in mind that many aspects play a role, not only during the registration procedure but also before that and after. Seeking for advice is highly recommended!