The law requires that we refuse trademark applications in certain cases. If we refuse a trademark, we cannot enter it in the Benelux Trademarks Register. In that event, you do not receive trademark protection and the costs incurred are not refunded.
The most important reasons for refusing a trademark are that:
1. the sign is descriptive;
2. the sign lacks distinctive character.
Read more about the two most important reasons for refusing a trademark
The most important reasons for refusal of trademarks are:
The trademark is descriptive - which is the most common reason. A trademark is descriptive when it describes the properties of the product or service or promotes these. For example: the words 'super fast bike' for the product category 'bicycles'.
Please note: the wording here is not always in common usage. The trademark 'medi' is not listed in the dictionary as a common abbreviation for 'medical'. All the same, it is a common designation that consumers will understand right away in the discriptive sense. So, this type of trademark could also be descriptive and hence declined.
The trademark lacks distinctive potential. A descriptive trademark will always lack distinctive potential. For example: we would have to decline the trademark 'certified window cleaner (cwc)' for cleaning windows. Firstly, 'certified window cleaner' gives a precise description of the service for which the applicants seek trademark registration. Adding the abbreviation 'cwc' makes no difference. In this case it is clear that 'cws' is the abbreviation of the descriptive designation for 'certified window cleaner'. On the whole this is not sufficient to grant the trademark distinctive potential. Moreover, the attractive presentation of the trademark, such as a special letter type or a striking colour make no difference. Indeed, the consumer will still recognize the descriptive significance. Adding domain designations (.nl, .be or .com) or the @-sign, will not make the trademark descriptive overall.
There are also trademarks that are not descriptive, but lack distinctive potential, such as (promotional) slogans, colours or product shapes.
Other reasons that trademarks are refused
Other reasons that trademarks are refused:
- The sign is deceptive. We cannot register a logo clearly depicting coffee, for example, as a trademark for something else, tea or sedatives for instance, as it could mislead consumers;
- The sign is a flag, armorial bearings or other official emblem of a State or international organisation, which is protected pursuant to Article 6ter of the Paris Convention. Such trademarks can only be entered in the Trademarks Register with the permission of the relevant state or organisation. A trademark containing the European flag, or parts thereof, is an example of such a sign;
- Trademark law is intended to protect signs which can be used to distinguish the products and services of one company from those of others. Trademark law is not intended to protect signs that should in fact be protected under other intellectual property laws, such as patent or design law. For example, in general, consumers consider the shape of a chair or lamp to be a design, rather than a trademark, i.e. a sign indicating the source of the chair or lamp. The law frames this as follows: the shape or another characteristic of a product, such as a sound, cannot be a trademark if it (1) is defined by the nature of the goods, (2) gives a substantial value to the goods, or (3) is necessary to obtain a technical result. In many cases, such a shape or other characteristic also lacks distinctive character;
- The sign is contrary to morality or public order. This ground for refusal is rarely applied in the Benelux;
- The sign is the same as a protected geographical indication, a protected traditional term for wine or a traditional speciality guaranteed;
- The sign consists in or is very similar to an older protected denomination for a plant variety.
A court of law may also rule that a previously registered trademark is invalid on the above grounds. In that case, it declares the registration null and void.
Are you unsure whether your trademark qualifies for registration?
Consult an external IP professional. BOIP is an independent body and, as such, cannot provide advice on an individual basis.