Trademark Law

Concept and function

Article 2.1 of the Benelux Convention on Intellectual Property (BCIP) describes what is meant by a trademark. Names, drawings, prints, stamps, letters, numbers, shapes of goods or packaging and all other signs are considered to be (individual) trademarks if they serve to distinguish the goods of one company from those of another.

It is important that a trademark sign has distinctive character in order to fulfil the function of the trademark.

Distinctive character

Signs that lack any distinctive character are referred to as descriptive signs and are therefore inadmissible as trademarks. For example, the designation “bakery” cannot serve as a trademark for the services and products of a bakery.

Trademark registration

Unlike other rights, such as trade name rights and copyright, trademark rights arise exclusively through registration. It is possible to register various types of trademarks. These include word marks, design marks and combined word/figurative marks.

Duration

The period of validity is, in principle, 10 years from the date of registration and can be renewed indefinitely. Unlike other intellectual property rights, trademark rights can be perpetual. However, a trademark can also lapse if it is not “normally used” for a period of 5 years.

Exclusive right

A trademark right gives the right holder an exclusive right to use their sign. The trademark holder, the person who is the registered owner of the trademark according to the registers, has the exclusive right to use the trademark and can oppose the use of their trademark or similar signs.

Exercising rights

If the trademark holder discovers an infringement of their rights or believes that this may be the case, they can seek an injunction (for example, in summary proceedings or by means of an ex parte order) with a linked penalty payment. In addition, under certain circumstances, the trademark holder can claim compensation and/or a transfer of profits.

Exploitation

The trademark owner may choose to use the trademark himself by offering products and services under the trademark. However, he may also choose to allow third parties to use the trademark or to allow shared use in a specific area. In that case, a licence agreement is quickly drawn up, setting out the rights and obligations relating to the use of the trademark and also agreeing on the financial compensation involved. Think, for example, of franchise agreements, which are largely based on the use of the franchisor’s trademarks.

When is there an infringement of trademark law?

An infringement of trademark law occurs as soon as a third party uses a trademark that is identical or very similar to a registered trademark without permission, and that use is for the same or similar products or services. The crucial factor here is whether the use could cause confusion among the public, for example about the origin of the products.

How can a trademark owner take action against infringement of their trademark rights?

If a trademark owner discovers that a third party is using an identical or similar sign for the same or similar products or services without permission, this may constitute trademark infringement. The trademark owner can then take immediate legal action to stop this use. The most common route is to send a letter of formal notice in which the infringement is identified and must be discontinued. If this has no effect, the trademark owner can impose a ban through summary proceedings or a request for an ex parte order, often reinforced with a penalty payment.

In addition, it is possible to claim damages or profit transfer, especially in cases of intentional infringement or financial loss. In urgent cases, the infringing goods and related invoices and contracts may also be seized. It is important that the trademark is valid and sufficiently distinctive – without active registration, you will have virtually no legal recourse.

Our experience shows that speed and a well-founded strategy are essential. Do you want to take strong action against infringement and maintain or strengthen your brand position? Then contact our IP specialists for a quick and thorough assessment of your case.

Role of solicitor

Trademarks are usually registered by trademark agencies. It is advisable to consult a solicitor, for example when it comes to strategic decisions and drawing up licence agreements.

It is also important to be aware of the legal possibilities and impossibilities in advance with regard to the enforcement of the various types of trademark registrations. The solicitors at Fruytier Lawyers in Business have extensive experience in trademark law. Our solicitors are often involved not only in disputes but also in the advisory process. We use the services of several reputable trademark agencies to register trademarks.