Trademark law

What we do

Trademark law protects the trademarks of companies. Trademarks can take various forms, such as word marks and figurative marks. The well-known sports brand Nike can hold trademark rights to both the word marks Nike and the famous logo that resembles a check mark (the Nike figurative mark is so famous that it even has a name: the Swoosh). Combinations of word marks and figurative marks can also be registered. In some cases, even colors and shapes qualify for trademark registration.

A trademark must be registered to enjoy protection. An important aspect of trademark registration is that the mark is distinctive in everyday life. Carefully choosing a brand name at the start of a business is therefore certainly relevant. A trademark that is descriptive in nature is not recognized as sufficiently distinctive. Consider, for example, trademarks that describe a profession, such as 'De Pizzabakkers' (The Pizza Bakers) or 'De Automonteurs' (The Car Mechanics). At an early stage, when establishing a company, it is advisable to seek expert legal advice on trademark protection. We assist organizations with registering various trademark rights in different 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

In the event of trademark infringement, damages may be claimed, among other things. We have the knowledge and expertise to assume various roles: from advisory services to dispute resolution. We have an experienced team of lawyers and legal experts in the field of trademark law. Contact us to discuss the possibilities.

Trademark law within intellectual property

Trademark law is one of the pillars of Intellectual Property (IP) law. While copyright protects creative works and patent law protects inventions, trademark law revolves around the recognizability of your company: the sign by which your customers recognize you. A strong brand is often a company's most valuable asset, whether you are an international corporation or the baker on the corner with a distinctive name.

Unlike copyright, a trademark right does not arise automatically upon devising a name or logo. The right only arises through registration (filing) with a trademark office. Trademark law frequently overlaps with other intellectual property rights: a logo can simultaneously copyright , a packaging design can fall under design rights , and a company name can also trade name protection . Our lawyers and in-house counsel always review the entire intellectual property position to ensure you are optimally protected.

The opposition procedure against a trademark application

Anyone holding an earlier trademark may oppose the registration of a younger, similar trademark. This opposition is called the opposition procedure. In the Benelux, you may lodge an opposition with the Benelux Office for Intellectual Property (BOIP) within two months of the publication of the filing; at the EUIPO, this period is three months. Pursuant to Article 2.14 of the Benelux Treaty on Intellectual Property (BVIE), the holder of an earlier trademark can thus prevent the registration of a confusing sign.

Opposition is generally faster and cheaper than court proceedings, but requires a keen assessment of the likelihood of confusion and the similarity between the trademarks. We conduct opposition proceedings for trademark holders who wish to protect their position, and defend entrepreneurs who are wrongly faced with opposition. Timely detection is crucial in this regard: once the opposition period has expired, this accessible route is no longer available.

Trademark infringement and likelihood of confusion

Trademark infringement occurs when another party uses an identical or similar sign for the same or similar goods or services without permission, in a manner that may cause confusion among the public. The scope of trademark protection varies depending on the situation:

• use of an identical sign for identical goods or services;
• use of a similar sign giving rise to a likelihood of confusion;
• use that derives unjustified benefit from or damages a well-known trademark, even without a likelihood of confusion.

When assessing the likelihood of confusion, judges weigh factors including the degree of similarity, the similarity of the products, and the reputation of the brand against each other. Well-known brands, such as major sports brands, enjoy broader protection in this regard. Whether it concerns look-alike packaging, a counterfeit product, or a confusing domain name, our legal experts rigorously assess whether the use actually infringes your trademark or is permissible.

Enforcement in trademark infringement cases: from cease and desist letter to lawsuit

If you detect trademark infringement, the process usually begins with a cease and desist letter ordering the infringer to cease use. If no appropriate response is received, summary proceedings before the court can result in an injunction against infringement within the short term, often reinforced by a penalty payment. In urgent cases, an ex parte injunction is even possible: an injunction imposed by the judge even before the infringer has been heard.

In substantive proceedings, the trademark holder may seek definitive remedies, including an injunction, damages or surrender of profits derived from the infringement, destruction of infringing products, and disclosure of purchasers and suppliers. A particularity of IP cases is that the prevailing party may claim reimbursement of full legal costs pursuant to Section 1019h of the Dutch Code of Civil Procedure. This significantly raises the stakes and makes a sound strategic assessment beforehand indispensable. Our lawyers litigate where necessary and seek a quick, cost-effective settlement where possible.

Expiration and invalidity: obligation to use a trademark

A trademark right is not immune from challenge. Anyone who registers a trademark must start using it normally within five years; if the trademark holder fails to do so, an interested party may have the trademark lapse due to non-use. This obligation to use prevents companies from blocking trademarks that they do not actually utilize. In addition, a trademark may be declared invalid if it lacks any distinctive character, is merely descriptive, or was filed in bad faith.

For several years now, lapse and invalidity can also be claimed directly at the BOIP, without the need for court proceedings. This is generally faster and cheaper. However, lapse takes effect from the moment of the claim, whereas invalidity has retroactive effect. We advise both trademark holders wishing to defend their position and entrepreneurs wanting to have an intrusive trademark removed from the register, and together with you, we determine the most suitable course of action.

Licensing and transfer of trademark rights

A trademark is an intellectual property right that you can monetize. You can transfer the trademark, for example when selling a business, or license it to another party who may use it for a fee. A good license or transfer agreement specifies who may use the trademark, for which products and in which territory, and how quality and enforcement are regulated. Careless agreements lead to conflicts and can even jeopardize the obligation to use.

We draft clear agreements and review existing contracts. Because trademark licenses are often linked to other IP rights, we work closely with our licensing contract. In this way, we ensure that your trademark is not only protected but also optimally utilized commercially, from initial registration to a potential business acquisition.

Frequently asked questions about trademark law

Do I need to register my trademark, or does the right arise automatically?
A trademark right only arises through registration (filing) with a trademark office such as the BOIP or the EUIPO. Without registration, you generally have no trademark right; limited protection may sometimes exist only through the trade name or through slavish imitation.

What does trademark registration cost?
A single-class Benelux trademark starts at a few hundred euros in official fees; a Union trademark (EUIPO) is higher. The correct class classification and a prior trademark search strongly determine the value of your registration. We advise on the most efficient filing strategy.

How long is my trademark protected?
A trademark registration is valid for ten years and can be renewed for ten years at a time. Therefore, in principle, protection can continue indefinitely, provided you continue to use the trademark normally and renew it in a timely manner.

Someone is using my trademark: what now?
First, have it assessed whether infringement has actually occurred. If so, a cease and desist letter usually follows, and if necessary, summary proceedings. Do not wait too long: doing nothing can weaken your position.

Trademark lawyer and legal expert at MKB Juristen

At MKB Juristen, you work with mixed teams of lawyers and in-house counsel who have a full-scale command of trademark law, from international corporations to the baker on the corner. We guide you in selecting and registering a distinctive trademark, safeguard your portfolio, conduct opposition and enforcement proceedings, and draft watertight licensing and transfer agreements. Because legal counsel and lawyers work together under one roof, we transition effortlessly from strategic advice to the courtroom, at clear and predictable rates.

Do you want to protect your brand, address an infringement, or know where you stand legally? Contact us for a no-obligation consultation regarding your trademark position.