1. What can be protected as a trademark?

The best-known examples of trademarks that can be registered are word marks and logos. But there’s more. Any sign that distinguishes your company or product is eligible for trademark protection. These include slogans (‘Just do it’), shapes of products (Toblerone bar) or the design of packaging (Red Bull can).. For example the position mark, a characteristic element applied in a specific place (the placement of the red label on the right back pocket of Levi’s jeans). Occasionally, it’s even possible to register a colour as a trademark (T-Mobile’s magenta).

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2. Do the research first

In trademark law, the rule is “first come…”. Therefore the holder of the oldest registration date has the prior rights. We highly recommend conducting a trademark search before registering and using your trademark. Trademark searching is the only way to discover and recognise existing brands that could pose a problem for your new trademark.

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3. Check for distinctiveness

When you apply for trademark registration, the trademark’s distinctiveness is checked. Trademark registration will be refused if you opt for a purely descriptive trademark. For example, ebookers, Banking Academy and Crunchy were all recently refused as the names are too descriptive and therefore not distinctive. You can use them, but you won’t get trademark protection.

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4. Opposition

Once the trademark has passed the test for distinctiveness, it will be published, and anyone who thinks that the new trademark is too similar to their earlier registration can object (opposition). If the new application is opposed, a comparison is made, and following that the trademark office checks the similarity of the two trademarks and considers a risk of confusion. If that’s the case, the trademark office will not approve the registration of the new trademark. If no opposition is raised, the trademark is registered and protected for ten years.

 

5. Trademark protection against confusion

Trademark registration ensures you can take action if any party uses a trademark so similar to yours that it may confuse the general public. In this case, not only does the similarity between the two play a role but the products or services offered are also important. Anyone who tries to use a Borneo trademark for chocolate cookies will not be able to compete with the older Oreo trademark. However, a clothing brand called Borneo, would be no problem.

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6. Trademark registration by country or region

Every country has a trademark register. If you operate internationally, you must register your trademark in all export countries. Fortunately, many countries have mutual agreements to simplify the registration process. You can indicate which countries you want trademark protection for with a single  application. But after that, the procedure starts per country. The EU has one overarching registration that luckily covers all 27 countries at once. And if you only want trademark protection in the Netherlands, you still need a Benelux registration.

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7. Duration of trademark protection

If your trademark registration is granted, you are protected in the relevant countries for ten years. Following that, the registration has to be renewed every ten years. Chiever will remind you of this in good time.

 

8. Trademark use

Registering a trademark also imposes obligations on the owner: it’s compulsory to use your trademark actively. A trademark owner must start using their trademark intentionally within five years of registration. If you don’t, the registration becomes vulnerable, and someone else can seek cancellation of the registration on the grounds of non-use.

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9. Marking

It’s good to show the competition that your trademark is protected. You can do this by adding an R (in a circle), which stands for ‘registered trademark’. This isn’t mandatory, but it gives a clear signal. You can only use this symbol if your trademark is actually registered. Otherwise, theTM symbol can be used for trademarks that are not registered or not yet finalised.

 

10. Trademark management and trademark monitoring

Registering a trademark is only the first step. After registration, Chiever can monitor the trademark. Every week we scan the register for trademarks that may infringe, and we sound the alarm if action is required. We also take care of the management of the registration. We include your data in our database and ensure all deadlines are monitored to keep your registration valid.

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11. Risks if you don't protect your brand

You run great risks if you don’t register your trademark. Leaving a trademark unprotected is like moving into a new house without taking out fire insurance. Without trademark protection, there’s a risk that someone else may register your trademark and prohibit you from using it. In addition, you need a trademark registration to take valid action against trademarks similar to yours. Without trademark protection, you are helpless against competitors that copy.

12. Online trademark protection

If you protect your brand well, it will give you coverage against anyone who uses your trademark offline, and also combat online abuse with that same trademark registration. For example, if someone wants to use a domain name that strongly resembles your trademark or if a competitor tries to take credit online with your brand.

13. Trademark protections costs

The cost of trademark protection consists of government charges and Chiever’s fee. To give you an idea: trademark registration in the Benelux will cost you approximately € 700 – € 800, giving you a ten-year trademark protection. Protection within Europe (27 countries) for ten years is a one-off cost of approximately €1,600. Costs can increase if the trademark has to be registered for many different products and services. But if you qualify for a subsidy costs can also be lower. We are happy to provide a tailor-made budget for costs outside Europe.

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Trademark protection

Do you have a question about trademark protection?

Do you want to brainstorm on the best use of your trademark? Would you like advice on choosing your trademark? Would you like advice and a quote for international trademark registration? We are happy to help you.

Kayin
Kayin Pang European Trademark Attorney +31 (0)20 8204000

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