Trademark! All the answers to your questions!

Trademark! All the answers to your questions!

How to register a trademark? How to protect it?

STOP!

Stop, you are in the right place.

Here you will find answers to all your questions regarding the registration trademarks.

Let’s be clear: this is NOT a long, boring text on “the state of trademark law in Belgium”.

Yes, here you will find a (simple and understandable) summary of the rules of trademark law.

But you will also find practical advices on how to file and manage your trademark (from application to registration).

Many practical illustrations are also provided.

So if you want to protect your activities with a registered trademark, this page is for you!

(If you want a quick answer, you can also contact us).

1. What is a trademark? How do I get one?

1.1 What is a trademark?

A trademark is the right of a person to “a sign”. This right allows the owner of the registered trademark to prohibit any third party from using his sign, for the goods or services for which the trademark is registered.

In practice, owning a trademark allows the owner to be the only one to use his trademark on his products, or to give a third party the right to use the trademark in return for a fee under a “licensing agreement”.

The right to a trademark exists only upon payment of a fee:

• for a fixed period (10 years, renewable on payment of an additional fee),
• for a certain territory (the territory of the state that collected the tax); and,
• for certain products or services to be defined at the time of filing (the longer the list, the higher the fee).

The larger the brand (in time, space, and in terms of the products or services it covers), the larger the budget.

1.2 What are the different types of trademarks?

The trade mark may relate to different types of signs. The protected sign may be :

• A “word mark” consists of a succession of letters;
• A “figurative mark” relates to an image (a logo);
• A “semi-figurative mark” is an image with letters;
• A “shape mark” relates to a three-dimensional representation (e.g. to protect packaging);
• A “sound mark” is a combination of sounds (such as the roar of the MGM lion, the sound of an ice cream truck, …);
• …

Many illustrations of the different types of trademarks are available online.

1.3. What is the difference between a trademark and a registered trademark?

The difference depends on the status of the brand over time.

In order to obtain a trademark on a sign, a multi-step administrative procedure must be followed.

The trademark application is first “filed” with an Intellectual Property Office. If the application is successful, the filed trademark becomes a “registered” trademark.

The trademark owner then has rights to the sign from the date of filing.

In practice, the two terms “trademark” and “registered trademark” are often used interchangeably.

2. Is it worth registering a trademark?

Not always: you have to sort it out according to the circumstances.

Whether or not it is worthwhile to register a trademark depends on several factors:

• the type of products or services marketed (high-end, high value-added or not);
• the type of marketing channels (online sales, international sales or not);
• the innovative nature of the product (creation of a new market or not);
• the period of development of your company (growth phase or not);
• the strategic nature of the sign (is the sign coveted by other companies or not?)

We discuss this below. But first, let’s remember what the purpose of registering a trademark is.

2.1. What is the purpose of a brand?

The brand distinguishes your product from a competitor’s product.

Consumers can identify the product by the brand, and repeat a favourable consumption experience.

The trademark also helps consumers to identify themselves when shopping by allowing them to rely on the fact that products of the same brand offer the same quality.

2.2. Can filing a trademark be useless?

Yes. Registering a trademark also costs money. Do you have to register your trademark? Think again: are you REALLY interested in registering your trademark?

I must confide in you: for a long time I thought that trademark law was useless.

Don’t get me wrong, I have never doubted that trademark law is of interest to Coca-Cola, Dior or Mercedes. In short, for multinational exceptions that need to protect themselves from foreign counterfeiting.

For an SME, the usefulness of registering its trademark is less obvious. There are several considerations that justify questioning the registration of a trademark:

• It is not necessary to register your trademark to start using the sign (especially since it is always possible to register your trademark after you have started using it);
• Registering a trademark is a cost (albeit a moderate one). This, even though the finances of an SME are generally limited;
• the cases of copying a little-known brand are relatively low.

It is primarily the nature of the business activities (the extent of the business activities, but also the property to which they relate) that determines whether or not there is an interest in registering a trademark.

Thus, there is little point in registering a trademark for a hairdresser’s salon or a restaurant whose ambitions are purely local.

In these two cases, the protection that is “automatically” attached to the trade name or domain name is more than sufficient. On the other hand, registration of a trademark becomes useful again if you wish to develop a franchise.

2.3. Does registering a trademark make money?

Yes, trademark registration is the source of great success stories

Experience now leads me to moderate the cynicism of my younger years and my initial scepticism.

There are several examples that demonstrate the usefulness of registering a trademark at the right time, even for an SME. By way of illustration, let us cite the following examples of (initially) small – or even purely local – companies that have managed to build their success around a strong brand:

• IceWatch: thanks to a promising design, but above all through effective marketing, the Liege-based company succeeded in creating a phenomenal buzz around a plastic watch, which is a classic and easily reproducible product;
• Breizh Cola : surfing on a particularly marked regionalist spirit, the “Cola du Phare Ouest” quickly created a strong commercial identity for itself through its brand, which is now distributed well beyond Brittany;
• Curtius: in addition to its undeniable gustatory qualities, “the beer from Liège” has established itself through top-of-the-range packaging, an effective marketing strategy and a brand that is already easily identifiable by the consumer (the “Curtius” being a museum eponymous with a historical figure, benefactor of the Cité ardente);
• Marcolini: anxious to protect the image of excellence of its creations, the Brussels chocolate maker has registered its name as a trademark to tackle the export market.

2.3 When should you register your brand?

Trademark registration is useful in the following circumstances:

• if your product/service is aimed at the top of the market (high-end), especially in a market of homogeneous products (cola, beer, chocolates, etc.): the trademark is then the main demarcation tool; it is crucial to protect it; it is important to remember here that any unregistered trademark can be registered by a third party even if you have started to use the trademark
• if you have international claims, including as soon as your product is sold online:
• in view of the large number of trademark conflict situations likely to arise in a globalized market (even for a French-language trademark: the French-speaking world is vast);
• Registering your trademark helps to fight against trolls (or cyber-squatters), who create parasitic websites close to the trademark name and then force you to buy the website address of their ghost site;
• Registering your trademark in Europe can then facilitate the registration of the trademark in other jurisdictions – including, notably, the United States;
• if you create a new market, which is quickly identified with the name of your product (e.g. “Bic” for biros; “Frigo” for fridge; “Ice-Tea” for iced tea, the second producer having to settle for the bastard name “Nestea”);
• if the sign is strategic;
• generally speaking, when success is on the horizon.

Would you like more advice before filing your trademark? Would you like help to register your trademark? Do not hesitate to contact us!

3. How to choose the right brand? 

A “distinctive” mark must be chosen in relation to the goods or services to which it relates.

3.1 What is a “good” trademark?

A good trademark must necessarily “distinguish” the product it relates to.

A “distinctive” sign is opposed to a “descriptive” sign, the registration of which is prohibited.

For example, the mark “Scottish Salmon” is descriptive and cannot be used to mark salmon from Scotland. Otherwise, competing producers of Scottish salmon would be unfairly excluded from the market.

• As a result, in recent years, many institutions have been named to avoid meaning, with brands that have no real meaning, and therefore allow them to stand out in the market:
• One of the best examples is probably that the old ‘Crédit communal’ (a very descriptive name: the bank was specialised in credit to municipalities) became ‘Dexia’, then ‘Belfius‘ – that is, a succession of letters in which everyone can see what they want, but which do not mean anything very clearly (the brand will therefore not be descriptive);
• Some brands choose descriptive words, outside their field of activity:
• “Asphalt” is not a company specialising in bituminous coatings for public works, but produces quality clothing.

This makes the choice of brand difficult, as, from a marketing point of view, a good brand should often evoke the product it is about. It is therefore a question of swimming between two waters, being creative and distinctive.

3.2. What are the requirements for obtaining a trademark?

The mark must be distinctive (not descriptive) for the goods and services it protects.

In addition, a trade mark application or a registered trade mark will be considered “invalid”:

• Where the mark is contrary to an absolute ground for refusal of registration:
• • the mark is devoid of distinctive character / the sign cannot constitute a mark ;
    • the brand is composed exclusively of :
      • elements that can be used to designate a characteristic of the product or service;
      • of elements that have become commonplace
    • the sign consists exclusively of the shape or other characteristic of the product dictated by its nature, function or giving it its substantial value
  • The mark is contrary to public policy or its use is legally prohibited;
  • The mark is likely to deceive the public about the characteristics of the product;
  • The trademark is the name of a plant variety;
  • The trademark was registered in bad faith;
• the trade mark is contrary to a relative ground for refusal of registration. In short, the mark will be invalid because it infringes a prior right:
• • a similar mark has been filed earlier and the second filing creates a likelihood of confusion between the goods for the consumer;
  • a trade name, a sign, a domain name, a denomination or a company name are previously exploited in a part of the territory and the registration of a trademark creates a risk of confusion in the mind of the public;
  • a similar protected indication (e.g. PDO, PGI, TSG, etc.) has been registered.

3.3. How to choose the goods or services for which the trademark is registered

Get help! A trade mark exists only in respect of the goods or services for which it has been registered. In practice, when filing the trade mark, a form must be ticked to designate the goods for which the trade mark is registered.

Care should be taken as the trademark only exists for registered goods/services. Mistakes are often made.

For example:

• For a t-shirt :
• • a mark intended to be worn on a T-shirt must be registered under Class 25; whereas,
  • the trade mark for a company providing T-shirt printing services should be registered in class 40.
• For software :
• • a mark intended to cover software must be registered in Class 9; whereas,
  • a trade mark for a company offering software development and coding services is in class 42.

A poorly registered trademark offers no protection. It is therefore often advisable to seek the assistance of a lawyer or IP consultant in order to register your trademark correctly.

4. How to register a trademark?

To put it crudely, a trademark is a legal monopoly on a sign. To obtain this monopoly, a fee must be paid to the administration.

The monopoly is then granted in the territory of the State which has collected the fee. The trademark exists only in that territory (and not outside it, unless the trademark has also been registered abroad).

4.1. How to register a trademark in Belgium?

It is not possible to register a trademark only in Belgium. Belgium has set up a Benelux Office for Intellectual Property (BOIP) and the ‘Belgian’ trademark necessarily also confers rights on the territories of Luxembourg and the Netherlands. This is quite a good deal.

The Benelux trademark is regulated by the Uniform Benelux Trademark Law.

4.2 How to register a trademark in Europe?

The European Union has developed a European trademark which, in a single registration, confers rights in the territory of all 27 EU Member States. The registration takes place at the European Intellectual Property Office (EUIPO).

Compared to what is done elsewhere in the world, this unified registration is the best possible “offer”.

The Community trade mark is regulated by Regulation 2017/1001 of 14 June 2017 on the European Union trade mark

Since Brexit, a separate trade mark must be registered to be protected in the UK. Registration takes place with the UK Intellectual Property Office (UKIPO).

4.3. How to register a trademark (anywhere) in the world?

Everywhere else, you must file a trademark application with the administration of each state in which you wish to have protection.

It is still possible to file a trademark with each of the European offices individually, such as :

• In France, the National Institute of Intellectual Property (INPI) ;
• In Germany, the Deutsche Patent- und Markenamt (DPMA);
• In Italy, the Ufficio Italiano  Brevetti e Marchi (UIBM).

If you want international protection, then you have to take your digital pilgrim’s staff and file your trademark before each of the Offices of the State in which you want a protected trademark.

To make things somewhat easier, the World Intellectual Property Organisation (WIPO) can act as a ‘one-stop shop’ for your applications. For the most part, however, WIPO is just a mailbox: unlike the European system, trademarks are then registered individually in each state, where you have to pay the local fee.

Do you need help to find your way through the maze of different trademark organisations? Please, do not hesitate to contact a trademark attorney or contact us!

5. How much does a trademark cost?

For ten years, a registered trademark does not cost much in the end in a single territory. It is the multiplication of registrations that is expensive. As well as the multiplication of the categories of goods or services to which it relates.

5.1. How much does it cost to register a trademark in the Benelux?

The basic price for a Benelux brand is €244 for ten years, for one category of goods.

Then count €27 for a second category of products/services. And + €81 for each additional category from the third onwards.

The complete price list of the Benelux brands is available on the BOIP website.

5.2. How much does it cost to register a trademark in France?

The basic price of a trademark in France is €190 for ten years, for a single category of goods and services.

Then count on +40 € for each additional category of goods from the second.

The full list of French trademark prices is available on the INPI website.

5.3. How much does it cost to register a trademark in Europe?

The basic price of a European trademark is €850 for ten years, for a single category of goods and services.

Then count €50 for a second category of products/services. And +150 € for each additional category from the third onwards.

The full list of European trademark prices is available on the EUIPO website.

6. Is my brand already registered?

The sign must be “free” in order to be able to file a trademark application for that sign.

Before filing your trademark application, you should therefore check whether a similar trademark has already been filed for similar goods or services. If so, it is probably best to choose another sign.

Be careful if you have international ambitions! If the trademark is free in your market, it is still worth checking whether the trademark is also free in other neighbouring territories.

It is annoying, to say the least, to have to limit one’s activities because the trademark is already registered abroad.

6.1. How do I know if my brand is already registered?

A “prior art search” must be carried out. This involves consulting the databases of the various intellectual property offices. For us, the most useful databases are :

• the database of the Benelux Office (BOPI trademark register);
• the European Office database (e-search plus);
• the European Office and European Intellectual Property Network (TM View) database;
• …or the dedicated database of the Trademark Office of the territory in which you wish to obtain a trademark.

In this database, you should then enter your sign (if it is a “word” or “semi-figurative” trademark) and observe the results already entered (for “figurative trademarks”, the best databases allow you to upload your logo directly and search according to the similarity of the images).

The results are then evaluated in terms of the similarity of the trademarks already registered and the goods or services to which they relate.

If the similarity is so high that there is a risk of confusion in the mind of the consumer between the two marks, it is better to change the mark.

The assessment of similarity and likelihood of confusion is based on a systematic method of analysis developed by the case law. The assistance of a lawyer or a professional trademark attorney may be necessary here. If necessary, please do not hesitate to contact us.

6.2. By whom was the trademark registered? How can the identity of the trademark owner be ascertained?

The trademark owner is always informed on the registration certificate of the registered trademark.

It is “sufficient” to find the trade mark in question in the above-mentioned databases at the prior art search stage.

7. What are the rights of the trademark owner?

Owning a trademark allows the owner to be the only one who can use the sign to which the trademark relates (or be the only one who can authorise the use of the sign).

7.1. What are the prerogatives of the trademark owner?

The right to a trademark allows its owner to prevent any competitor from using the same (or a similar) sign for the same (or similar) goods or services.

If your trademark is imitated by a competitor, you can take action for infringement against the competitor.

Conversely, any competitor could prohibit you from using the sign if they register it as a trademark before you do.

7.2. How to license a registered trademark?

The trademark also allows the use of the sign by a third party to be paid for.

This can be done by concluding a licence or franchise agreement. The contract authorises the use of the trademark in return for payment of a fee (the so-called “royalties“).

For example: Coca-Cola is a drink produced under a franchise agreement. All over the world, the Coca-Cola Company gives permission to bottlers to produce its cola-flavoured drink and to put its brand on their bottles, in return for a royalty payment to the brand owner.

A good licence agreement is a document that needs to be precisely drafted, and the balances need to be weighed with a trebuchet. It is advisable to call on a professional lawyer to draft this type of document. For this purpose, do not hesitate to contact us.