Trade names and the trade name search
An existing trade name (the name under which an organisation is run as opposed to a trademark) is one reason why an objection may be made to a new trademark and vice versa!
When starting a new organisation, it is wise to conduct a trademark search in addition to the trade name search. This is because the Trade Names Act [Handelsnaamwet] prohibits the use of a trade name that contains the name of a trademark to which another party is entitled for the purpose of ensuring the distinctiveness of its products or services. Because of this, it is possible that the owner of a trademark registration will object to the use of your trade name.
Registration of your trade name as a trademark
If you are already using a trade name, we recommend that you register the trade name as a trademark. In the explanation below, we will endeavour to explain exactly why it is advisable to register the name of an organisation as a trademark. If you are running an organisation under a certain trade name in the Netherlands, you will automatically gain protection under the Trade Names Act. Under this Act, you will gain a certain protection for the trade name in question.
With this protection in place, you will be in a position to take action against organisations that are using a newer trade name that deviates just slightly from the name used by you, in situations where there is a risk of confusion amongst the public as a result of this use, given the nature of the organisation and the place in which it has its registered office.
In other words, when the market position of both organisations and the nature of the activities are very similar, a trade name infringement will apply in most cases.
You may think that your name will be well protected in this situation. However, all kinds of situations may arise in which the Trade Names Act is unable to help you achieve the outcome envisaged. In virtually all of these cases, the Benelux Trademark Act would have been of more use.
Under the Benelux Trademark Act, you gain far broader protection when you protect your trade name as a trademark. In this situation, you will also be able to take action against the use of your name by another party as a trademark for similar products or services. Added to this, the place in which both organisations have their registered offices is not relevant: you will become qualified to a right for the entire Benelux and it will not be necessary for there to be any concrete danger of confusion.
Given the above, we advise everyone to protect their trade names as trademarks.