Any sign that has distinctive character. A sign must be able to distinguish the goods and services of one company from those of its competitors. Purely descriptive words or word combinations are not considered trademarks. Many types of signs can qualify as trademarks, such as words, logos, numbers, shapes, packaging, musical tunes, slogans and more.
No. To obtain trademark rights in the Benelux, it is necessary to register the trademark in the trademark register (either the Benelux register or the European trademark register). It is important to submit the application as accurately as possible. An incomplete or incorrect submission may still result in trademark registration, but in case of issues, the registration may not always be enforceable or may even be invalid.
In the Benelux, a registration is valid for 10 years. After that, the trademark can be renewed in 10-year increments. However, the law requires the trademark to be used. Five years after the registration date, the trademark must be in use. If a trademark is not used for five years or longer, other companies can request its cancellation.
Yes, a number can be a trademark. However, the number must not refer to a characteristic of the product, as this would mean it lacks distinctiveness. A trademark registration does not always grant absolute rights. It may not always be possible to prohibit third parties from using the number—for instance, when it is used to indicate the content or quantity of products. This can also be a reason for the authorities to initially refuse the trademark.
Yes, in the Benelux, a family name or personal name can serve as a trademark. However, trademark rights are not absolute in this case. If someone else has the same name, they are generally allowed to continue using it. It is possible, though, to prohibit someone from starting a business under the same name if they intend to offer identical products or services (for example, a second VERKADE for cookies is not allowed, even if your name is FEER VERKADE). In some countries, names listed in phone books, common names, or names of well-known individuals, such as a president’s name, are not accepted as trademarks. However, this rule does not apply in the Benelux.
Yes, a logo can be a trademark. However, it is important that consumers recognize the logo as a means of identification. An general simple logo is not considered a trademark, such as a single colored dot or a design consisting of only one or two abstract colors. Such a non-distinctive sign can still acquire distinctiveness through use and gain trademark rights. For colors, clearly specify which colors are involved or the composition of the logo (e.g., the PMS/Pantone colors).
Yes, but shape trademarks are subject to quite strict requirements. This is because authorities often consider shapes to lack distinctiveness, viewing them as merely decorative. They often believe that consumers are unable to recognize a shape as a distinctive sign. For this reason, it is often necessary to first prove that the shape of the product has acquired distinctiveness through use.
Yes. The appearance of packaging plays an important role in distinguishing a product from others. This includes the shape of the product as well as its layout. The label or the overall appearance of the product can qualify for a figurative trademark. If the product’s appearance is new, it may also be possible to apply for a design registration.
Yes, a music tune can be registered as a sound trademark. However, strict rules apply. The trademark application must include the musical staff, notes, any keys (e.g., C key, F key), rests (e.g., whole, half, quarter), and other musical symbols that indicate the melody line. At the European Union Intellectual Property Office (EUIPO), an electronic audio file of the music fragment can also be submitted. An example of a sound trademark is Für Elise.
Yes, as long as the public perceives the portrait as a distinctive sign for the product and not as decoration. For example, if a portrait of singer Michael Jackson is displayed on a CD, it is more likely to be recognized as representing the artist on the CD rather than as a distinctive sign. It is also important to note that a person’s appearance changes over time. This raises the question of whether the product should continue using the younger portrait or switch to a new one. In such cases, a new portrait trademark would be required.
In addition, the name of a well-known person can serve effectively as a trademark, for example, for clothing (Johan Cruijff) or perfumes (Christina Aguilera). Copyright law provides protection for a person’s portrait.
By using such a mark intensively and over a long period (for example, in advertising campaigns), it may be that consumers start recognizing the sign as a distinctive identifier. In that case, the mark can still be registered. However, proof of acquired distinctiveness often needs to cover the entire Benelux region (e.g., for English words , a color, or shapes).
It is advisable to report a name change or a transfer of ownership of a trademark in a timely manner. If legal action is initiated in a trademark dispute, the trademark owner’s details must match the information recorded in the trademark register; otherwise, the case may be deemed inadmissible.
It is in the trademark owner’s best interest to remain reachable. If incorrect address details are listed in the trademark register, correspondence regarding important matters such as trademark renewals or infringement cases may not reach the owner in time, with potentially serious consequences . It is therefore strongly recommended to register any address changes in the trademark register as soon as possible.
Yes, it is possible to register a trademark under multiple owners. However, it is advisable to establish clear agreements, particularly regarding who will retain the rights to the trademark if the parties part ways. This includes not only the rights to the trademark itself but also, for example, who will be allowed to continue using the domain names.
It is advisable to register the licensee in the Benelux trademark register. Only then can a licensee directly claim compensation or profit disgorgement in a legal dispute. An additional benefit of registration is that the licensor cannot unilaterally cancel the registration. A request for cancellation of the license must be signed by both parties. Registering the license also binds the parties more closely, which can be an advantage for the licensee.
In many countries outside the Benelux (such as Eastern European and Latin American countries), the user of the trademark must be the same as the registered owner. If this is not the case and the trademark has been registered for more than five years, it may sometimes be canceled due to lack of legitimate use by the registered owner . Registering a licensee in the trademark register is then the only way to maintain full rights.
It is not mandatory to use the symbols ©, ™, or ® in the Benelux.
The © symbol is used for works protected by copyright. It is often included in texts to indicate that the work is protected under copyright law and originates from the creator.
The ™ symbol is used to indicate that there may be rights associated with a name or sign, regardless of whether the trademark is registered.
The ® symbol is used to indicate that a trademark is registered. This symbol is typically placed in the upper right corner of the trademark.
A trade name is the name under which a company presents itself in the market. This can refer to the entire business, but sometimes a specific part of the business operates in the market under its own name (for example, online). The use must be in the context of economic activity. Companies can present themselves under various names in the market and often claim trade name rights for all of those names.
Yes, trade name rights arise automatically when the trade name is actually used. Merely registering the name with the Chamber of Commerce or registering a domain name is not sufficient to claim rights under the Trade Name Act. Evidence such as invoices, web pages, brochures, etc., must demonstrate that the company presents itself in the market under that name. It is therefore important to retain this evidence, even if business records are destroyed for tax purposes.
Yes, companies often provide advice under the company’s name, positioning themselves in the market under that name. In such cases, the trade name coincides with a service mark. It is important to register the company name as a trademark. This allows the company to expand its activities across the entire Benelux with confidence. Additionally, it is advisable to register the company logo as a trademark. Trade name law only protects the name of a company and does not provide protection for the use of a logo.
A trademark distinguishes goods and services (indicating the source of the products), whereas a trade name is the name of the business itself. The law also sets different requirements for each. Trademark law is stricter; for example, a trademark must not be descriptive of its goods and services. Trade name law is more lenient, as the requirement for distinctiveness does not apply to trade names. However, there is a limit. Since name rights arise automatically through use, their scope of protection is also limited to the area of use. This means the protection is confined to the geographical region where the business operates, which can be very local. A trademark registration, on the other hand, provides protection throughout the entire Benelux or, in the case of an EU trademark, across the entire European Union, even if it is used only in a limited local area.
A design is a product with a new appearance and its own distinctive character (the overall impression must differ from existing products). A design can have either a two-dimensional (e.g., a drawing) or three-dimensional (e.g., a piece of designer furniture) appearance. It can also be a part of an object (e.g., a print on a piece of clothing). However, the design’s appearance must be visible—for example, a circuit board inside a closed computer does not qualify for design rights. Examples of registered designs include Crocs clogs, Lego, iPhone, and storm umbrellas.
A design must be new. Therefore, it is best to apply for protection before the new design is presented for the first time. However, the product/design must be fully finalized. In the Benelux and the European Union, protection can still be applied for within 12 months after the first presentation. In some countries outside the European Union, such as the United States, absolute novelty is required.
To obtain protection for a design, it is necessary to register the design in a register (either the Benelux register or the European design register). The authorities do not assess whether a design is valid. A design must be new and have its own distinctive character. If this is not the case, a design registration can be challenged later.
In the Benelux, a design registration is valid for 5 years. After that, the protection can be extended every 5 years. The maximum protection period is 25 years.
Yes, packaging can be considered a design if its appearance has not previously been on the market and it sufficiently distinguishes itself from existing packaging. Examples include Mona pudding desserts and Johma salad containers.
Yes, objects with a decorative function (including decorative items such as earrings, bracelets, etc.) may qualify for design registration. The appearance of the jewelry must be new and possess some originality compared to existing jewelry.
Yes, a design or pattern can qualify as a model. Examples of a design include drawings, photos, or wallpaper patterns. The image or pattern must be new and not previously used. A model pertains to the visual perception of a design, not the underlying idea.
A tagline or slogan is a concise, suggestive phrase that conveys a motto or a message.
Een slogan kan een merk zijn maar deze mag niet te lang of te ingewikkeld zijn anders is deze niet in staat om te onderscheiden. Als de slagzin een gewone zin of alleen een aanprijzing is, wordt die vaak geweigerd door de autoriteiten. Het publiek moet namelijk wel gelijk begrijpen dat de slagzin slaat op een product of dienst. Bekende slagzinnen die als merk zijn ingeschreven zijn: “Heerlijk Helder Heineken”, “Foutje Bedankt,” “Ik wil Bolletje”.
Een slagzin kan na veelvuldig gebruik onderscheidend vermogen krijgen inburgeren en als merk gezien worden.
Voorbeeld: have a break (have a Kit Kat)
A slogan can be protected in several ways. A slogan can (sometimes) be registered as a trademark. Additionally, it is possible to register a slogan in the Slogan Register. If a slogan is highly creative and distinctive, it may also be protected by copyright. Copyrights arise automatically. However, special actions are required for registration in the Slogan Register or as a trademark.
The Dutch Slogan Register was established by the industry itself. Registration does not provide legal protection. However, in some court cases, judges have given value to registration in the register. Since the register is publicly accessible, another company could be aware of the registration. In practice, it is sometimes easier to register a slogan in the Slogan Register than in the Trademark Register. A slogan is registered in the Slogan Register if it is unique in relation to the product. Proof of use is also required.
Works of literature, science or art fall under copyright law. However, it is not limited to art; many applied art objects are also protected by copyright. This includes packaging, music, texts, and photographs. An important criterion under the law is that it must be a concrete representation. It is not an idea or a vague plan but rather its actual visualization. If the work has been conceived and made public by someone else, copyright can no longer be claimed.
Ja, auteursrechten ontstaan automatisch wanneer het werk openbaar wordt gemaakt. Het is alleen niet altijd evident wie de auteursrechthebbende is van het werk. Er wordt in principe vanuit gegaan dat degene die op het werk staat vermeld (bijvoorbeeld als het werk gesigneerd is) ook de auteursrechten heeft. Auteursrechten worden overgedragen per akte. Het is daarom van belang, om eigenlijk alles vooraf goed te regelen en schriftelijk vast te leggen. Als dat niet gedaan is, achterhaal dan hoe een werk tot stand is gekomen.
Yes, in fact, this is often the case. This overlap of rights comes with a few considerations and can sometimes lead to issues. When design protection is applied for, it is assumed that the copyright belongs to the applicant of the design. However, the original design is often not created by the applicant. For example, a freelancer may have been hired, or the idea may have come from a suggestion box.
Therefore, it is important to arrange in advance who will hold the rights if a design registration is also carried out.
Copyrights arise automatically and last until 70 years after the death of the holder. Design rights are obtained through registration and can last for a maximum of 25 years.
The practical requirements for both a design and copyright are almost identical (a design must also have its own distinctive character). An advantage of design rights is that a certificate is ultimately issued. This can serve as proof of the rights and their ownership. Thanks to the registration system, it is also relatively easy to apply for protection abroad or grant a license for a design.
A domain name indicates the IP address (Internet Protocol address) of a website. IP addresses are difficult to remember because they consist of programming language. That is why a domain name is used. The domain name is the part that comes after the “www.” prefix. It often includes the name of a company or product.
Often, the dealer contract specifies exactly what is and is not allowed. Additionally, it is not always possible to register a domain name in every country. For this reason, the dealer may sometimes need to register the domain name. It is wise to make mutual agreements about this (particularly regarding what to do if the parties part ways). If no agreements have been made, a dealer often has a legitimate interest in registering the domain name from a legal perspective. In such cases, the possibility of resolving the matter out of court is often no longer an option. In the event of a conflict, the matter will need to be resolved through the courts (and based on trademark law).
No, domain names themselves do not grant rights. However, owners of older trade names and trademarks can take action against the use of a conflicting domain name. The conflict is then assessed based on trade name law or trademark law.
The use of a domain name can establish trade name rights. This may occur if a business presents itself to the public under the name of the website. Naturally, it is essential to consider the activities the business offers and whether this creates issues under trade name law.
Action is often taken based on trademark law. This can happen if the domain name includes the same trademark or if counterfeit products are being offered on the website.
AdWords are keywords that can be used to generate advertising links in the Google search engine. Google offers a variety of keywords to promote an advertisement. In addition to general words, trademarks can also be selected. These keywords, however, come at a cost. The highest bidder gets the top placement. When one of these keywords is searched, the advertisement is displayed either alongside or above the search results.
Yes and no. The use of a keyword identical to someone else’s trademark is subject to certain rules. In the context of fair competition, the courts have ruled that using keywords identical to a trademark is permitted if there is no confusion among the public regarding the origin of the product. The advertisement must clearly indicate whether the products originate from the trademark holder, an affiliated organization such as a dealer, or a competitor.
In several cases, courts have allowed the use of such keywords to offer a legitimate alternative, considering it a form of proper comparative advertising. However, the use of an AdWord must not damage the reputation of the trademark.
Note: The permissibility of using someone else’s trademark as an AdWord varies by country (France, for instance, has a different stance than the Netherlands). Case law on this issue is still evolving. Contact us if there is a suspicion of unlawful AdWord use.
Call us: 071-5763116 or send an e-mail to: info@abcor-ip.com
Een korte introductie tekst over de nieuwsbrief waarin je uitlegt wat het is. Hoe je direct de nieuwste editie kunt lezen en hoe je je kunt abonneren. And click here for all the numbers.
Among others in this issue:
• EUIPO vs Mora TV: weigering geluidsmerk
• Jägermeister vs Alte Heiler: stop Russische copycat
• Stichting Nederlandse Top 40: gericht op Benelux?
• Tijdschrift HART vs Hermitage: soortgelijkheid
• Monique Granneman: nieuwe partner Abcor
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Tel: 071-5763116
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E-mail: info@abcor-ip.com
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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.
