Trademark law

What is trademark law?

Trademark law protects the signs with which you distinguish your products or services from those of others: your brand name, logo, slogan, and sometimes even a shape or color. Unlike copyright ,which arises automatically, you generally only acquire trademark rights through registration. Only after registration in the trademark register can you take action against others who use your trademark without permission.

Our lawyers and in-house counsel assist both international corporations and the local entrepreneur — from filing a first trademark to summary proceedings against a counterfeit product. Trademark law is a distinct, clearly defined part of the broader field of intellectual property law.

Trademark registration with the BOIP and the EUIPO

You register a trademark for the Benelux with the Benelux Office for Intellectual Property (BOIP) or for the entire European Union as a Union trademark with the EUIPO. The choice depends on your market: if you are active throughout Europe, a Union trademark under the Union Trademark Regulation (Regulation (EU) 2017/1001) is the obvious choice; if you operate only in the Netherlands, Belgium, and Luxembourg, a Benelux filing under the Benelux Treaty on Intellectual Property (BVIE) is often sufficient. When filing, you select the goods and services according to the Nice Classification; these classes determine the scope of your protection.

A well-prepared filing begins with a trademark search: does an earlier, similar trademark already exist? We assess distinctiveness, advise on the appropriate classes and territory, and thus prevent you from investing in a trademark that later fails or infringes.

Absolute and relative grounds for refusal

A trademark must have distinctive character. Descriptive or customary designations are refused on absolute grounds: a trademark that merely indicates the kind, quality, or purpose cannot be registered. A weak, descriptive trademark may still become valid through acquired distinctiveness — if the public has come to recognize it as a trademark through intensive use. In addition, relative grounds apply: an earlier, similar trademark of another party may block your registration. Shapes determined by the nature of the goods or that produce a technical result are excluded pursuant to Article 2.2bis of the Benelux Convention on Trademarks.

The opposition procedure at BOIP and EUIPO

If a trademark is filed that is too similar to yours, you may lodge an opposition. At the BOIP, pursuant to Article 2.14 of the BVIE, a time limit of two months applies after publication of the filing; at the EUIPO, this is three months. Only holders of an earlier registered right may oppose. Following the admissibility test, a two-month cooling-off period follows, which the parties may extend by mutual agreement to attempt an amicable settlement. If you are unable to reach an agreement, the parties exchange arguments and defenses, and the firm makes the decision. Opposition proceedings easily take about a year. We monitor the time limits, conduct the opposition or defense, and negotiate a coexistence arrangement where that is wiser than continuing the proceedings.

Risk of confusion and hierarchy

The core of trademark law is the likelihood of confusion: is there a risk that the public will believe that goods or services originate from the same or economically linked undertakings? This is assessed broadly, whereby the degree of similarity of the signs and the similarity of the goods can offset each other — greater similarity in less similar goods can still create a likelihood of confusion. In principle, the first to file holds the oldest rights: the ranking (priority) determines who has the strongest position. A well-known trademark enjoys broader protection in this regard, even beyond its own goods.

Trademark infringement: enforcement and procedure

If another party uses your trademark or a similar sign without permission, you can take action pursuant to Article 2.20 of the Benelux Trademark Act (BVIE) or Article 9 of the EU Trademark Regulation (EU). You can seek an injunction against infringement, destruction of infringing stock, disclosure of purchasers and profits, and damages. In urgent cases, summary proceedings or even an ex parte injunction offer quick results. We often start with a targeted formal notice; if that does not resolve the matter, our lawyers will litigate before the competent court. Please note the exhaustion principle: if you have placed a product on the market in the European Economic Area with your permission, you can, in principle, no longer prevent its further trade.

Expiration due to non-use

A trademark is not perpetual possession without use. If you do not make normal use of your registered trademark for an uninterrupted period of five years, another party may invoke its lapse. Therefore, keep your use of the trademark demonstrable: retain proof of use in the appropriate classes. Conversely, a proof-of-use defense can assist you when an older trademark holder approaches you but does not use their trademark themselves. Also, prevent it from becoming a generic term, as a trademark that becomes the common designation of the product may lose its protection.