Trade names

What we do

The Trade Name Act protects the trade names of enterprises. An enterprise may use multiple trade names in commercial practice. Trade name protection sometimes resembles or overlaps with trademark law, but there are important differences. Unlike trademark law, a trade name does not need to be registered to benefit from protection. The only requirement is that the trade name is actually used in commercial practice. Generally, trade names are registered with the Chamber of Commerce, but under the Trade Name Act, this is not a formal requirement for protection. Another important difference is that trade names may also be descriptive in nature. A descriptive trade name such as 'De Pizzabakkers' or 'De Automonteurs' does not preclude protection. We assist enterprises with various infringement disputes.

A trade name can also be registered as a trademark. This can be an advantage because trademark law has a broader scope of protection than the Trade Name Act. We assist organizations with registering trade names as trademarks in various registers such as:

• Benelux Office for Intellectual Property (BOIP) based on BVIE
• European Union Intellectual Property Office (EUIPO)
• Registration with the World Intellectual Property Organisation (WIPO) pursuant to the Madrid Protocol

We have the knowledge and expertise to assume diverse roles: from advice to dispute resolution. We have an experienced team of lawyers and legal experts in the field of intellectual property law. Contact us to discuss the possibilities.

How does trade name protection arise?

Pursuant to Article 1 of the Trade Name Act, a trade name is the name under which an enterprise is actually conducted. The right to a trade name does not arise through registration, but through actual use in commercial transactions. Whoever is the first to use a particular name generally holds the oldest right. However, that right is limited to the area where the enterprise is active and enjoys notoriety – the so-called territory. Consequently, a nationally operating company has a broader area of ​​protection than a local enterprise. For the baker on the corner, therefore, the trade name primarily protects their own region, whereas an international group can claim protection throughout the Netherlands and beyond via additional trademark registrations.

Risk of confusion: the core of Article 5 of the Trade Name Act

Article 5 of the Trade Name Act prohibits the use of a trade name that has already been lawfully used by another party, or that differs only slightly from it, insofar as this is likely to cause confusion among the public between the undertakings. The risk of confusion is therefore central. In their assessment, judges take into account all the circumstances of the case: the degree of similarity between the names (visual, auditory, and conceptual), the nature and activities of both undertakings, and the distance between the locations and the target audience. In the Vangoud Advocaten/Goud Advocaten case, the Court of Appeal ruled that the newer name was too similar to the older one and caused confusion. We will assess for you whether there is a risk of confusion and how strong your position is.

Descriptive trade names and the DOC Dairy Partners judgment

For a long time, there was uncertainty regarding the protection of descriptive trade names, such as 'De Pizzabakkers'. In the DOC Dairy Partners/Dairy Partners judgment (Supreme Court, February 19, 2021, ECLI:NL:HR:2021:269), the Supreme Court ruled that a single standard applies to descriptive trade names as well: a likelihood of confusion is sufficient for protection under Article 5 of the Trade Name Act. Additional circumstances are no longer required as an independent requirement; the earlier line established in the Parfumswinkel judgment has thereby been abandoned. However, a descriptive name only becomes distinctive – and thus capable of causing confusion – when the public has come to associate that name with one specific business through intensive use (acquired distinctiveness). Whether your name is sufficiently distinctive strongly determines your chances in a dispute.

Trade name versus parent brand and domain names

A trade name can conflict with an older trademark. Pursuant to Article 5a of the Trade Name Act, it is prohibited to use a trade name containing the trademark to which another party holds rights, insofar as this is likely to cause confusion among the public regarding the origin of goods or services. Conversely, a trade name can also infringe an older trademark pursuant to the Benelux Treaty on Intellectual Property (BVIE). Domain names can also qualify as trade names when the business is actually conducted under that name; a domain name conflict is then simultaneously a trade name issue. We advise on the interplay between trade name, trademark, and domain name law, ensuring that you protect your name on all fronts. Please also read our page on trademark law.

Actions in case of infringement of your trade name

If another party infringes upon your trade name, various avenues are available to you. Pursuant to Article 6 of the Trade Name Act, you can demand, via a petition procedure before the sub-district court, that the infringer change the name. Additionally, you can seek an injunction and damages for unlawful conduct (Article 6:162 of the Dutch Civil Code) in summary proceedings or in main proceedings. Often, a dispute begins with a formal notice urging the opposing party to cease using the name. Our lawyers and in-house counsel guide you from formal notice to legal proceedings, and also defend you when you are the one being sued.

FAQ about trade names

Do I need to register my trade name?
No. Protection arises from use in commercial transactions, not from registration. Registration with the Chamber of Commerce is not a requirement, but it can provide proof of the moment you started using the name.

What is the difference between a trade name and a trademark?
A trade name is the name under which your business is conducted and arises free of charge through use, limited to your area of ​​operation. A trademark distinguishes your goods or services, requires registration and costs, and is valid throughout the Benelux or the EU. A trademark may not be descriptive; a trade name may.

Can a descriptive name such as 'De Automonteurs' be protected?
Yes, provided there is a likelihood of confusion with an older company and the name has acquired distinctive character through use. Since the DOC Dairy Partners ruling, the likelihood of confusion is the decisive criterion for this.

Can a domain name be a trade name?
Yes, if your business is actually operated under that domain name. A dispute regarding a domain name is therefore a trade name issue.

Intellectual property (IP law)

Trade names form one part of the broader field of Intellectual Property (IP) law. Within that field, we also advise on trademark law, slavish imitation , and trade secrets. With mixed teams of lawyers and in-house counsel, we assist every entrepreneur – from international corporations to the baker on the corner.