The protection of trademarks
In order to be able to invoke trademark protection, you must file your trademark in a trademark register. For protection within the Benelux such registration can be done at the Benelux Office for Intellectual Property (BOIP). For protection within the EU, registration of your trademark must take place at the European Union Intellectual Property Office. For worldwide protection marks must be registered at the World Intellectual Property Organisation (WOIP) in Geneva.
In order to register a trademark, it must be sufficiently distinctive. This means that it must recognisably be from your company. The greater its distinctive character, the more protection you enjoy as a trademark owner.
In principle, a trademark registration lasts ten years, but can be extended indefinitely. If you haven’t used the brand for five years the trademark rights lapse.
In order to be able to invoke trademark protection, you must have your trademark filed in a trademark register. This can be done at the Benelux Office for Intellectual Property (BOIP), for protection in the Benelux. For protection throughout the EU, have your trademark registered with the European Union Intellectual Property Office (EUIPO). For worldwide protection, have it filed with the World Intellectual Property Organisation (WIPO) in Geneva.
To qualify for registration, a trademark must be sufficiently distinctive. So that it can function as an indication that your company is the origin of the protected goods or services. The greater the distinctive character of the mark, the more protection you enjoy as a trademark owner.
Trademark registration is in principle valid for ten years, but can be extended indefinitely. If you do not use the trademark for five years, it may be declared invalid at the request of another party.
When you register a trademark, the trademark registers check a number of things. For example, whether the trademark is sufficiently distinctive. In addition, they examine whether the trademark is not misleading or contrary to public order or morality. They do not check whether your trademark infringes a previously registered trademark. That is your own responsibility.
Before you register and use a trademark and/or logo, we therefore advise you to have research conducted into the possibility of older, conflicting trademarks or trade names of third parties. This will prevent you from having to change your trademark after already having invested in it.
A domain name can also infringe someone else’s trademark rights, for example if a domain name contains someone else’s trademark. It is possible to take action against such infringement on the basis of trademark law, for example by claiming a transfer of the domain name.
Legal advice in cases of infringement of trademark law
Once you have registered your trademark, you have the exclusive right to use the trademark in relation to the goods and services for which it has been registered. Other companies are not allowed to use it for such purposes. Nor may they use names, logos, packaging or other signs that resemble your trademark. If they do, you can take action against such infringements.
The lawyers at Nysingh will be glad to advise you if someone infringes your trademark rights. We can also assist you if another party believes that you are infringing their trademark rights. We act expeditiously, always striving for a pragmatic solution, but we will also litigate with verve if the case demands it. We have a great deal of experience with the various administrative trademark law proceedings and (international) civil proceedings, such as summary proceedings, proceedings on the merits, ex parte proceedings and seizure proceedings.
Our specialists are at home in IP and trademark law. We work for national and international companies, including various well-known trademarks and retail chains, and for trademark attorneys, design studios and advertising agencies.
Feel free to contact us if you need specific, practical advice, for example on:
- (potential) trademark infringements, at home and abroad
- international (selective or exclusive) distribution networks
- drafting and reviewing licensing and distribution agreements
- parallel import
- declarations of invalidity of trademarks
- claiming prohibition, compensation or transfer of profits
- defence against infringement claims by third parties
- international aspects of trademark law
- transfer of trademark rights