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Print versionII. Trademarks
a. What is a trademarks?
Trademarks are word (verbal) or device (figurative) signs (also called logos) used to differentiate products and/or services of a commercial entity with reference to other similar products and/or services, provided or commercialised by third parties on a given market.
The trademark often symbolises the notoriety or the origin of products and/or services. As a result, the holder of a trademark possesses the right to counteract anyone who uses identical or similar marks for identical or similar products and/or services. Such an usage can indeed create confusion for the consumer concerning the origin of rendered or commercialised products and/or services.
Certain legislations, especially in the Benelux, also allow the protection of the outlook or packaging of a product. Thus, for instance the presentation of TIME ® magazine (red exterior band) is registered as a trademark so as to distinguish the product from its competitors products.
b. What is a corporate name?
The corporate name is the name mentioned in the deed of incorporation and published as such in the Belgian Law Bulletin. The corporate name is also listed in the Trade Register.
Art. 65 of the Corporate Law, dated May 7, 1999, stipulates concerning this matter:
"Each company should use a name different from the ones used by other companies. In case names are similar or create confusion, each affected party may request modification and compensation, whenever founded".
Protection in this context is limited to corporate names, which is a much more restricted notion than trade names or trademarks. Inevitably, protection is also limited to the Belgian territory.
c. What is a trade name?
This name refers to the name known to the general public and the name used for commercial exploitation. This name is not necessarily officially registered. Use of the name in daily business transactions is sufficient.
The law on trade practice, information and protection of consumers, dated July 14, 1991, offers protection to some extent.
Art. 23, 8° stipulates: "Without prejudice to other legal or provisions or rules, all publicity is prohibited: ..."
8° containing data that could give rise to confusion with another vendor, his products, his services or his activity".
Additionally, the general prohibition on trade practice contrary to accepted moral principles can also be applied, as mentioned under art. 93:
"Any act contrary to accepted trade principles, involving (possible) damage to the professional interests of one or more vendors, is prohibited".
No registration or other formality should be performed in order to call in such a legal protection. Even registration in the trade register is not compulsory.
Normal use of a trade name suffices to benefit from protection. The first to use the trade name will be protected against later users. Obviously, this matter is related to trade companies offering the same kind of services or products under the same trade name.
Due to a lack of formalities, problems may occur to prove one’s case.
The offered protection is rather restricted. Before talking about infringement, certain criteria should be considered: the kinds of activity known under this trade name, the region where these activities take place, etc.
Identical or similar trade names should have a high degree of similarity before competitive positions may be damaged or may create confusion with the general public.
d. How to protect a trademarks?
A trademark is protected when filed and registered as a national, international or community trademark.
There exists no national proceedure for Belgium, only a uniform Benelux-filing is possible which automatically leads to protection in Belgium, the Netherlands and Luxembourg.
Filing a community trademark allows - due to a centralised proceedure (in only one language) - to the registration of a unique right, which will be effective in all states of the European Union.
The advantage of such a filing is its validity for a large market of more than 350 million consumers and the fact that filing and registration costs are less than the accumulated costs for a bundle of corresponding national trademarks.
It is generally accepted that a community trademark should be considered whenever protection is sought for more than 4 to 5 countries of the European Union.
International filing allows for protection in a large number of European and extra-European countries, especially in those countries which are not member of the European Union market.
According to the filing proceedure that has been chosen, it is possible to protect different territories and different product and/or services categories.
e. Is a preliminary search necessary?
Before filing it is possible to carry out a preliminary search. This proceeding can be carried out with the administrations such as the Belgian Office for Industrial Property or the Benelux Trademark Office in order to find, based on a search for word or device trademarks that may be a bar against a new filing.
It is useful to call a Trademark Attorney to help you to analyse the results of this preliminary search and to inform you on possible conflicts with prior rights.
More detailed searches (similarity searches) on word and/or device trademarks can be carried out with the help of specialised institutions.
For more information click here
f. How long is a trademark protected?
Protection of trademark is valid for a predetermined period, in general 10 years. However, trademarks can be renewed as many times as often as renewal fees have been paid.
g. How to obtain a trademark registration?
Basic conditions for trademark filing and registration are:
The sign should have a distinctive character
Only the sufficiently distinctive signs, being neither necessary, nor useful, nor banal, nor generic, having neither a descriptive nature of the substantial qualities or of the aims of the products they designate, can be accepted as a trademark.
The sign should be acceptable in view of legal provisions
The following trademarks cannot be registered as a trademark because of being unlawful:
- signs contrary to good manners and public order
- scutcheons, flags and other national symbols of member countries of the Union or of other international organisations,
- misleading trademarks.
There exist 3 categories of unavailabilities:
- unavailable because of private law towards a third party concerning his name, his portrait or one of his works protected by copyrights or by other intellectual property laws,
- unavailable due to the prior registration of a trademark by a third party,
- unavailable as a result of a commercial denotation protected by public law or by signs used by third parties.
During filing and registration proceedures it is advisable to be assisted by a Trademark Attorney.
h. Is it compulsory to have a filed trademark used?
A trademark is only valid and protected when being used.
Trademarks can be exploited by the trademark holder or by a third party with the holder's consent (namely with a licence-agreement, a franchise-agreement, a distribution contract or with whatever kind of agreement that may be suitable).
The trademark can be mentioned next to the products referred to or in all kinds of advertising, possibly accompanied by the registration symbol ® in case the trademark is already registered, or accompanied by the letters TM in case the filed trademark is not yet registered.
i. How to defend one’s trademark?
The essence of any right, including trademark right, is that the one who acquires it can claim the right and protect it against third parties who wish to appropriate it.
It is of major importance that competitors respect other people's trademark and that they only use it with the consent of the trademark holder.
National legislations have been developed to protect trademark holders against third parties, who are using identical or similar trademarks for identical or similar products and/or services.
Before starting an action against third parties, we advise you to consult your Trademark Attorney and/or lawyer specialised in Trademark Law.
In general we recommend the following proceedure:
Cease and desist letter
In most cases, before summoning the possible competitor/infringer, a cease and desist letter will be prepared by your Trademark Attorney and/or Lawyer.
The aim of this cease and desist letter will be to invite said competitor to stop any use of the trademark, and depending upon the case, to obtain the radiation or annulation of its own trademark rights.
This cease and desist letter is also meant to acquire more information on rendered or commercialised products and /or services, and to possibly define the field of application of the respective trademarks.
Court Action
In default of a friendly settlement or in case a cease and desist letter seems to be useless or dangerous (risk of destroying all evidence concerning unlawful trademark usage), the trademark holder will take the matter to court.
In numerous cases an accelerated proceedure ("en référé") will be introduced, mostly to stop the unlawful trademark usage.
Other conservatory measures of proof can be envisaged, such as the sequestering of the products being commercialised under the misleading trademark.
Said proceedings will be followed by regular proceedings where the holder of said trademark can claim damages from third parties having used his trademark.
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j. How to obtain supplementary information on trademark filings
Office Van Malderen is specialised itself in the protection and defence of industrial property rights.
Office Van Malderen has a group of 11 engineers and lawyers experienced in trademark law and will be happy to help you to protect your rights.
For more information click here
k. What is the value of a trade name compared to a trademark?
Previously existing trade names or corporate names can be called in at your defence against usage of a more recent and registered trademark, conditioned that certain circumstances are met. This should, however, be investigated in each case separately. No general rule applies to this particular situation.