Trademark law gives the trademark owner a unique monopoly on the name. But how do you get those rights?
A trade name is the name under which a company operates in the marketplace. In addition, companies often use trademarks for certain products or services they offer. Companies use that trade name and trademarks to position themselves in the marketplace. It is one of a company’s most important assets in creating value. For consumers, it is a recognizable sign, a way to distinguish one company’s products and services from those of another. Trademark law gives the trademark owner a unique monopoly on the name. But how do you get those rights?
coming up with a new name / new brand
check availability of a new name/new brand
establish monopoly on use of the name
When choosing a trade name or brand name, there are several angles to consider, each with its own advantages and disadvantages:
A name based on the founders, such as Albert Heijn or Bakkerij Jansen, gives the brand personal weight. The disadvantage, however, is if the founder falls away the name no longer covers the load.
Names such as Google or Ziggo are powerful brand names but require more effort to build awareness. The disadvantage is that it is immediately clear to consumers what products or services are being offered. As a result, the cost of introducing the brand is higher.
A name like Lotus or Apollo does have a clear meaning but there is no direct link to the product. The advantage is that such a name does make the customer think. The disadvantage is that often many companies use the same name for other products.
Think of names like Kitchen Competitor, where consumers immediately understand what the company e offering. The downside is that these names are often not exclusively protectable (think competitors like KeukenComfort and KeukenKampioen, for example).
Names such as VitaLinea (healthy dairy) or Hero’s B’tween. These establish a link to the product without being completely descriptive. They give a certain feeling, but leave room for growth. Advantage: the name is easy to protect, disadvantage it takes a bit longer (higher communication costs) to gain awareness.
Often several names come out of the brainstorming session. It is important to first research the availability of these names.
It is essential to have a logical domain name that is available for marketing purposes. If the desired name is busy, check if a combination can be made with a generic term such as “store” or the product name “car. Check not only the availability of the domain name but also whether the important social media accounts are still available….
Check whether the name may evoke the wrong association with the target audience, or whether it has an undesirable meaning in other countries (example Fiat Croma – Croma is a brand of cooking butter in the Netherlands – the car is a packet of butter). Also pay attention to the sound and whether the name can be pronounced abroad.
Avoid conflicts and check whether the name is already being used by other companies, even if it is spelled slightly differently. For a company name, always first consult the Chamber of Commerce (CoC) register which trade names are recorded there. Companies also use other names, so also conduct an online search (for example, via Google) to see which other companies use this name.
Have a thorough check by one of our trademark lawyers to assess whether the proposed name may conflict with existing trademarks. Trademark owners of older, similar marks may object if there is confusion with similar products or services. Fortunately, not every trademark is an immediate problem; it depends on a lot of factors. So real legal work for our lawyers
Research is done to anticipate potential problems/to avoid the need to change the name after the costly introduction.
Use of a trademark gives no rights. Only if the name is registered as a trademark can the company do a monopoly on it. How does this final stage work?
A trademark application must clearly indicate (1) which trademark is involved (2) for which products or services protection is claimed and (3) in which territory. In principle, the first to register a trademark has the right to prohibit others from using similar signs for the same or similar products or services.
After filing the application, trademark authorities assess whether the mark does meet all legal requirements, such as distinctiveness, non-descriptiveness. In addition, the authorities check whether the trademark claim is not too broad. Often generic terms (e.g. advice or logistics) are a problem. Important: The trademark authorities do not check whether the trademark claim is correct, whether it corresponds to a company’s core business! That is the responsibility of the applicant. So legal customization, but daily business for our trademark lawyers.
If the application is approved, the mark is published. Older trademark owners can then object if they believe the mark is too similar to their older mark. If this is justified, the application is refused. In case of a conflict, our lawyers always try to find a solution, how to register the trademark anyway.
If there are no objections, the trademark is registered after about four months. A trademark registration is valid for 10 years, but is renewable thereafter for 10 years at a time. There is an obligation of use within five years of registration. Non-normal use of a trademark (because, for example, the trademark claim is not correct) can lead to cancellation of the trademark.
In addition, many rogue companies are active in application and renewals. They bombard companies with fake invoices (but then in the small lines it says that this is for an advertisement in a magazine in Tajikistan, for example). Therefore, have both the application and renewals done by one of our lawyers.
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Abcor is a member of the following industry and quality organizations: Benelux Association of Trademark and Design Law, International Trademark Association, Advertising Law Association.
