A search shows which (identical and/or similar) trademarks have been registered or filed. The object of a search is to gain an insight into the possible risks ensuing from the use of a trademark.

A search should be conducted before you register a trademark, in order to gain an insight into the risks of using a new trademark. If you have already started to use a trademark, you have already taken the risk of infringing on the rights of another party. In this situation, we would be pleased to discuss the usefulness of a search with you, with the object of identifying the risk applicable as much as possible at this stage.

A search will never be able to provide certainty on the actual availability of a trademark. It is best to regard a search as: acting responsibly by using the resources available to ensure that risks are kept to a minimum.

Filing
When a trademark is filed in the Benelux, the Benelux Office for Intellectual Property will assess the trademark on absolute grounds. For example, the Office will consider whether your trademark is descriptive for the goods or services mentioned in the application (for example: the word SUPERMILK for milk) or is contrary to public order or public morals. If so, the Office can refuse your application and you will be able to file an appeal. Naturally, we will always discuss the chance of a refusal with you in advance.

The Benelux Office for Intellectual Property may also carry out an informative search for older, similar trademarks. This search is purely for your own information and the Office may not refuse your registration because of the existence of older, similar trademarks. However, the owners of these trademarks can decide to take action against your trademark.

Given the above, it will be important, in practice, to conduct a prior search (a so-called preliminary search) in situations in which you want to use a new trademark, in order to assess the availability of the trademark in question.

It is also possible to arrange for your trademark to be registered as part of an accelerated procedure, subject to the payment of an extra fee. Some situations make it imperative to ensure that a trademark is registered without delay. This will be the case, for example, if you want to invoke your trademark against someone who is infringing on your rights or if you want to achieve international protection for your trademarks, which must be based on a basic registration in the Benelux in certain cases.

In the event of an accelerated registration procedure, the trademark in question will be registered once all of the relevant formalities have been met. It is possible to complete this procedure in just several days. Please note, the assessment based on absolute grounds and any opposition will take place after registration in this situation. This may mean that your registration is deregistered at this point.

Classes
A trademark will be registered for certain goods and/or services. According to the formal rules on classification, these goods and/or services will be divided into certain classes (groups of products and services). We will prepare the classification on the basis of the goods and/or services stated by you. The registration costs incurred when registering a trademark always includes three classes. A surcharge will apply for an extra class.

Period of validity
A trademark registration will be valid for a period of 10 years, after which it can be extended for further periods of 10 years, if required.

Watch service
When we file a trademark in the Benelux for you, this trademark will always be registered for the watch service in the Benelux. By doing this, you will be informed about new trademark applications that are similar to your own trademark. We will advise you whether the new trademark infringes on your trademark rights. In consultation with us, you may decide to object to this. If you find that your trademark is no longer important during the course of its validity, you will be able to cancel your subscription at the end of each current year. We will remind you of this in writing each year.

The costs for a watch service subscription will start on 1 January of the year following the year in which your application is filed. As such, your watch service will be free of charge in the first calendar year.

Filing a trademark
If you decide to proceed to file a trademark, you will need to decide whether you want to have a search conducted prior to this. For more information about this, see the heading Trademark searches. Once this decision has been made, the search or filing procedure can be started.

In principle, there are three different ways to protect a trademark outside the Benelux. Each of these methods has its own advantages and disadvantages and which of these is the best choice for you will depend on your individual situation. More information follows below about the various possibilities open to you.

The international registration
Citizens of the Benelux (organisations and private individuals) that have a Benelux registration will be able to apply for protection abroad via an international registration on this basis.

An international registration is a ‘bundle’ of national trademark registrations. An international registration enables you to gain protection in a large number of countries in a reasonably easy, fast and affordable manner.

The costs applicable for an international registration consist of a basic fee plus a country surcharge for each country that you choose.

When opting for an international registration, it is also possible to extend the registration to include extra countries in due course. Just as with the standard application, the costs involved will consist of a basic fee plus a country surcharge for each country that you choose.

The European registration or the Community trademark
The European registration offers you the possibility to gain protection for all of the countries in the European Community by filing just one application. In addition to the Benelux, these countries are Austria, Bulgaria, Croatia, Cyprus (the Greek part), the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

A basic registration is not compulsory. However, in the trademark application, or after obtaining the trademark registration, prior rights obtained in countries in the European Union may be invoked (= seniority), as a result of which the European trademark right will revert to this older date in these countries, as it were. As a result, the renewal of any existing national registrations will be unnecessary. For details of the advantages and disadvantages of the various registration systems, also see: Advantages and disadvantages.

In countries that are not member countries of the system of international or European registration (Canada, for example), protection can only be obtained by means of individual national applications.

Costs vary per country, but are usually (far) higher than those applicable for an application submitted via an international or European registration.

Individual national applications are very expensive and will only be of interest when there is no other alternative or when you are interested in just one country (an international or EU registration will provide protection in various countries for the same price).

The advantages and disadvantages of the various systems
Whichever option you choose in order to achieve protection abroad, the ultimate rights will be just as strong. Because of this, there is no need for you to consider which route is the best one for you; your primary concern should be which route will be the most (cost) efficient.

The advantage of European registration is that one registration will provide you with protection throughout the EU and use in one of the countries will maintain your rights throughout the EU. However, the disadvantage is that refusal in one country will result in the refusal of the application as a whole. In this situation, the application could be ‘converted’ into national applications, but this is very expensive.

One advantage of the international application as opposed to the European application is that when objections are made to your trademark in one country, the application for the other countries will be maintained and you will only lose the application in the country in question. The application is very affordable and low risk and is always a very good choice. Another big advantage is that this type of registration can be extended to include protection in a number of countries at any given time.

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.

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.

The Benelux Convention on Intellectual Property (Trademarks and Designs) (Beneluxverdrag inzake de Intellectuele Eigendom (merken en tekeningen of modellen) protects designs and drawings. As a design, the new three-dimensional design for an implement can be protected under this Act. Examples are the new appearance of vacuum cleaners, cars or furniture. Drawings will be two-dimensional decorations, designs, motifs or patterns that are applied to products like wallpaper or textiles. In practice, the term ‘design’ is used to refer to designs and drawings collectively.

The development of a new product is often accompanied by significant costs. To avoid a situation in which another party freely takes advantage of your efforts at no expense to itself, it will be important for you to protect the appearance of your new product as a design. A design registration will give you the possibility to prohibit third parties from any commercial act involving the product registered, such as the production, sale or importing of the said product. A design registration only protects the appearance of the product and, as such, not its technical operation.

Design protection is obtained firstly by registering the design with the Benelux Office for Intellectual Property. A design that is registered must fulfil the requirements relating to novelty and the individual character of the design. On the one hand, ‘novelty’ means that the design may not have been used yet, not even by you. On the other hand, this means that if someone is able to demonstrate that an object that is identical or virtually identical in appearance was already available in the market at the time at which the design was registered, the novelty can be disputed. If this is successful, the design registration will be invalidated. Because of this, novelty is a very important requirement.

The Benelux Convention on Intellectual Property (Trademarks and Designs) now offers the possibility to achieve a valid design registration up to one year after the design in question has been disclosed. However, no case law is available yet about this new concept of ‘novelty’, as a result of which some caution is still called for. The concept of ‘absolute novelty’ is recognised in many countries outside the Benelux, which means that the design must be new throughout the world. Therefore, if you would also like to protect your design outside the Benelux, you will need to take this into consideration and, preferably, apply for protection for the design immediately in each country in which you want to sell your product.

It is possible to protect from one to 50 designs inclusive with just one Benelux design registration and it will not be necessary for there to be any connection between any of these designs. For example, it is permitted to include a chair, a key ring and a design for wallpaper in just one design registration.

The Benelux Office for Intellectual Property will only subject a design application to a formal search. A design application may not be refused because of the existence of prior design registrations that may conflict with your own application.

It is likely that you will also want to start to sell your new product outside the Benelux. Because of this, we will also provide you with some information about design protection abroad. There are three possibilities in terms of protection, namely the Community design, the so-called international design registration and national design registrations for each country.

It is possible to obtain one registration that will be valid in all of the countries in the European Union (Austria, Belgium, Bulgaria, Cyprus (the Greek part), the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom).

The registration forms an inextricable part for all 27 countries. The advantage of this is that the costs involved are relatively low. The disadvantage is that if problems arise in one country (with the owner of an earlier right, for example), this will also have consequences for protection in the other countries. We can provide you with further information about this, should you wish us to do so.

If you also intend to use your design in one or more EU countries outside the Benelux, an EU registration is the most inexpensive option.

The Hague Agreement makes it possible to obtain an international design registration. If you are interested in an international design registration, we can provide you with an overview stating the countries that can be indicated in this registration. These include Germany, France, Italy, Switzerland and Greece. You will be able to obtain protection in one to all of the member countries, depending on what you want. The Benelux may be indicated in an international design registration too.

It will be possible to protect from one up to and including 100 designs under an international design registration. In contrast to a Benelux design registration, only designs that have been grouped in the same administrative class, such as a hairdryer with different parts or a series of different pieces of furniture or articles of clothing may be included in one multiple international design registration.

The International Bureau of WIPO will only subject an international design application to a formal search. A design application may not be refused because of the existence of prior design registrations that may conflict with your own application.

When you wish to gain design protection in countries other than member countries of the international or EU registration system, such as the USA or Japan, this will only be possible via a national registration. Where national applications are concerned, the multiple registration of different categories of models is rarely possible either.

It should be observed that it is not necessary for the product as a whole to be new. It will suffice for just one or more parts of the product to deviate from products known previously. Also, if only existing parts and techniques have been used in the development of the new product, it will still be possible to achieve patent protection, provided the requirements mentioned above have been met. Incidentally, a patent offers protection for products, but also for systems and processes, such as manufacturing techniques and procedures.

The following applies for patents too: as soon as you disclose your invention, you are impairing the novelty of your invention and it will be too late to achieve protection for the product at this stage. In principle, anyone will be free to use your invention in this situation. Therefore, it will be important to establish whether your product or process qualifies for patenting at an early stage here too and, if yes, to promptly make a decision about the steps that you wish to take in this connection.

Although you could choose to prepare and submit a patent application yourself, it is customary and far safer to arrange for a patent attorney to do this for you. If you believe that your product or process contains new, non-obvious parts, which could provide you with a competitive advantage, we will be pleased to put you in contact with a patent agent with the expertise required.

Given the fact that the filing of a design can also impair the novelty of an invention (and vice versa), we feel that it is very important to assess your products on the basis of both the Patent Act [Octrooiwet] and the Benelux Convention on Intellectual Property (Trademarks and Designs) before disclosing them via filing and publication, or otherwise.

The internet address, the domain name with the .nl extension, is registered with the Foundation for Internet Domain Registration in the Netherlands [Stichting Internet Domeinregistratie Nederland]. A number of domain names can be registered for one and the same organisation. A domain name will not necessarily be your own trade name. It could also be a product name, for example. The domain name always has a certain extension. For example: .nl, .com, .org, .net, etc.

The disadvantage is that a certain name may only be used as an address once. If your name is Johnson and you want to use the name Johnson.nl, but someone else has already registered the name Johnson.nl, you will need to choose a different domain name. The area in which the other party is active is not relevant: once registered, the name cannot be used a second time!

Register your name without delay!
The importance of registering your name goes without saying – if this is still possible. This can be arranged simply and quickly. Every day, we register trademarks, trade names, designs, products, etc. throughout the world. Although the registration of domain names is not our core activity, we do feel that it is very important for these names to be registered. Should you wish us to do so, we can recommend a suitable provider to you.
Het nadeel is dat een naam slechts één keer als adres gebruikt kan worden. Heet u Hoogenboom en wilt u bijvoorbeeld de naam Hoogenboom.nl en heeft iemand anders de naam Hoogenboom.nl vastgelegd, dan moet u een andere domeinnaam kiezen. Het maakt niet uit op welk gebied de ander actief is: éénmaal vastgelegd kan de naam niet voor een tweede keer gebruikt worden!

Snel uw naam vastleggen!
Het spreekt voor zich dat u uw naam vast moet leggen – zo dit nog mogelijk is. Dit is eenvoudig en snel te regelen. Ons dagelijks werk bestaat uit de registratie van merken, handelsnamen, modellen, producten enz. over de hele wereld. Het vastleggen van Internetnamen is niet onze kernactiviteit. Desondanks vinden wij het vastleggen van deze namen erg belangrijk. Wanneer u dit wenst kunnen wij u doorverwijzen naar een provider met wie wij een goede samenwerking hebben.

You will retain the right to take action against the licensee when it acts contrary to the provisions of the licensing agreement, with regard to the term of the agreement, the form in which the trademark may be used as covered by the registration, the goods and/or services for which the licence has been granted, the territory in which the trademark may be used or the quality of the goods marketed by the licensee.

If you want to licence a trademark to a third party, it will be important for you to enter this licence in the trademark register. This is because the licence cannot be invoked against third parties if you do not do this. This means, for example, that if the owner of the trademark were to sell the trademark to a third party, or if this were to be done by a receiver in the event of liquidation, the licensee will not be able to derive any rights from the licence. However, he/she will be able to do so once the licence has been signed.

Licences may also be granted within your own organisation. For example, you can hold a trademark in your private name or in the name of your holding and grant a licence to your private limited company (BV) or operating company. Constructions of this nature can pay off in the future and offer you extra protection against the consequences of unexpected financial emergencies.

We will start by studying the issue at hand and considering your position. This will then be used as the basis for the preparation of a defence for you, where the possible infringement of your rights by a third party is concerned, or action could possibly be commenced, in a situation where a third party is possibly infringing your rights.

If you find that you are unable to reach a solution out of court, it will be possible for you to bring the matter in question before the court. This must be done by a lawyer. Should you wish us to do so, a lawyer from Marqu Intellectual Property Law can represent your case. Because of the close collaboration involved, it will be more practical and simpler for us to take over the case rather than for you to engage an external lawyer. However, should you wish us to work with your own regular lawyer or a specialist IP lawyer, we will, of course, be only too pleased to do so.

Marqu Intellectual Property Law is a business-oriented practice and, as such, also offers full-service legal services in other branches of law, such as:
– Agency and distribution
– Contract law
– Collection