Register a trademark

Why register a trademark?

A trademark protects the name, logo or combination of name and logo under which you offer your products or services to consumers. It allows consumers to distinguish your products and services from other products and services. As a trademark holder, you can take legal action against the use of signs that are too similar to your trademark. Registering a trademark therefore serves to prevent competitors from causing confusion among your (potential) customers. Trademarks guarantee that consumers can verify the origin of products and services.

Brands also protect the goodwill you build. If customers have a good experience with your products or services, they will remember your brand positively. And when you invest in brand awareness, for example through advertising, that awareness is stored in your brand, so to speak. A carefully built brand is a powerful tool in competition.

Various trademarks to be registered

A trademark is applied for within a specific territory. Only the intellectual property office in the relevant territory can register your trademark. For example, you can choose a Benelux trademark, a European trademark or an international trademark. A Benelux trademark only offers protection within the Benelux and you will apply for it at the BOIP (Benelux Office for Intellectual Property). A European trademark offers protection in all member states of the European Union and can be applied for at the EUIPO (European Union Intellectual Property Office). Finally, you can also opt for an international trademark, which offers protection within one or more countries, including outside the European Union. You can apply for an international trademark at a national office or at the WIPO (World Intellectual Property Office).

You can register the name (as a word mark), logo (figurative mark) or a combination of name and logo (word-figurative mark) under which you offer your products or services as a trademark. However, a trademark can consist of any signs that can serve as distinctive signs. Thus, a trademark can even be formed by colours, shapes of goods, packaging of goods and even sounds. For example, if you always use a recognisable jingle in your advertisements, this can also be registered as a trademark.

Goods and services

A trademark is registered for specific goods and services and only provides protection against the use of similar signs by competitors for similar goods or services. When applying for a trademark, it is important to think carefully about which goods or services you want the trademark to be registered for. This is because you cannot change the goods and services once your mark is registered. If you already know that you will expand your product range or services in the near future, it is wise to include this in the trademark application.

It is also important to think about how specifically you describe the goods and services. More broadly defined goods and services can ensure that the trademark has a larger scope of protection. However, describing goods and services too broadly also entails a risk: differences in nuance may result in it being ruled that there is no trademark infringement after all. Wieringa Advocaten specialises in trademark law and will be happy to assist you in drafting accurate descriptions of services.

Sufficiently distinctive

A prerequisite for applying for a trademark is that the sign applied for is sufficiently distinctive. A random series of numbers and figures will not be readily accepted as a trademark. Also, a trademark must not be descriptive of the goods or services for which you are applying for the trademark. Thus, if you apply for the trademark “E-bike” for selling E-bikes, you will have little chance of a successful trademark registration. The relevant office will then refuse to register your trademark.

Older trademarks

When applying for a trademark, it is also important to find out beforehand whether there are any older trademarks that are too similar to yours. After all, you do not want to be confronted with older trademark owners who will try to take your younger mark off the table. For example, they may start opposition proceedings or ask the court to declare your trademark invalid. Before you file a trademark application, it is therefore wise to search the registers of the BOIP, the EUIPO or the WIPO to check that your trademark is not already in use by someone else.

Validity

If your trademark is permanently registered then it is valid for ten years. You can renew the trademark for ten years each time thereafter. Finally, make sure that you continue to actively use your trademark for the goods and services for which it is registered. If you do not use the trademark for the goods or services for which it is registered for more than five years, it may be (partially) revoked at the request of others.

Trademark registration costs

You can find more information on the costs of registering a trademark on the website of the EUIPO and the BOIP. You always pay a basic fee and, depending on the number of classes, you also pay an additional fee.

Trademark research

To prevent a trademark office from refusing to register your trademark, it is important to conduct a thorough trademark search beforehand. Your trademark application must meet all the requirements of trademark law. A trademark search is also important to prevent you from eventually being confronted with a competitor’s older trademark that is too similar to yours. This could result in you no longer being allowed to use your trademark. The intellectual property lawyers at Wieringa Advocaten regularly conduct trademark searches in which they identify any risks. That way, you know where you stand in advance.

Benefits of Wieringa Lawyers

Our intellectual property lawyers specialise in trademark law and regularly advise and litigate on trademarks. They also regularly conduct trademark registrations for clients and know what is important in that respect. If you are planning to register a trademark, Wieringa Advocaten will of course be happy to help you.