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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. 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.

c. 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.

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d. 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.

e. 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.

The sign should be available

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.

Before registration of a trademark, the filing Administration can carry out a search for anteriorities to determine whether the trademark to be protected is available; additionally, they can raise one or more objections against the distinctiveness, lawfulness or availability of the trademark.

During filing and registration proceedures it is advisable to be assisted by a Trademark Attorney.

f. 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.

g. Defending your 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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h. 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