Naturally, as an entrepreneur, you position your product or services optimally in the marketplace. You use your trademark to secure name-awareness while promoting the unique properties of your product or service. Here lies the power of your trademark.
To this end your trademark deserves protection. After all you don't want your competitors to copy or misuse it. Once you have officially registered your trademark it is legally protected. Competitors cannot simply piggy-back on your success.
The registration of your trademark is subject to statutory rules. When you apply for trademark registration we check that your trademark complies with these rules. If it does not we are required to decline the registration. In that event the costs of registration are non-refundable. Check in advance that your trademark complies with the rules.
Remember that other parties can object to your application. This may be when your trademark is identical or very similar to a previously registered trademark for the same or similar products and services. So, check in advance that your trademark does not already exist.
What is not a trademark?
Only distinctive trademarks are liable for registration. What counts here is the total impression of the word and (possibly) visual elements left with the public by the trademark. In the event that, for example, a consumer takes the trademark as a general description of the product and/or services, the trademark is not distinctive. In legal terms, a trademark that isn't distinctive, is not a mark. This is subject to strict legal conditions.
Why must a trademark be distinctive?
Trademark registration provides a monopoly for the use of a trademark for given products and services. Say you were granted a monopoly for e.g. a general description, this would allow you to stop other parties from using this description - which would obviously not be appropriate. Hence, a trademark must be distinctive.
For example: granting a monopoly for the word 'baker' denoting bakery services would prevent any other baker using the word 'baker'. Whereas the word simply sets out the activities of a baker. However, the trade name 'Baker' for a supplier of building materials is permissible.
Whether a trademark is or is not distinctive is not an immovable criterion. Language and terminology alter with time. A designation seen as imaginative ten years ago may no longer be distinctive today.
Can my trademark application be refused?
The law states that in a number of cases we are required to refuse a trademark application. If we refuse a trademark we cannot enter it in the Benelux Trademark register. That means no trademark rights and no protection. Costs paid are non-refundable.
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.
In addition to the two above reasons, BOIP may identify more reasons to decline registration of your trademark, for instance if it is misleading.
Types of trademarks
When you start your application for a trademark registration, please indicate the type of trademark involved.
Most trademarks are word marks, pure figurative marks or figurative marks with word elements. Other types are shape marks, colour marks and sound marks.
1. Word mark
A word mark is a distinctive name under which a product or service is put on the market.
Example: the word ANGELICUS for beverages such as coffee, water, and gin.
2. Figurative mark
There are two types of figurative mark: 1) 'pure' figurative mark: a logo or a label, exclusively comprising a figurative element without texts, letters or figures; 2) 'figurative mark with word elements': their registration offers protection for the sign as a whole. However, it is not a separate registration of the word as such.
Examples of figurative marks
3. Shape mark
In given cases the shape of a product or the packaging may be a mark.
Example: the shape of a special perfume bottle.
4. Colour mark
A colour or a combination of colours can be registered as a trademark if the public primarily recognizes a product or service by its colour.
Example: the colour blue of the CampingGaz gas tanks, or the blue of Bison glue.
5. Sound mark
When hearing some commercial jingles the public immediately knows what is meant. In such a case a jingle can be registered as a mark.
Example: the Haribo candy tune.
6. Pattern mark
A pattern mark is a trademark consisting exclusively of a set of elements which are repeated regularly (in a pattern).
7. Position mark
A position mark is a trademark consisting of the specific way in which the mark is placed on or affixed to a product.
Example: the red label on the trouser pocket of a pair of Levi’s jeans.
8. Motion mark
A motion mark is a trademark consisting of, or extending to, a movement or a change in the position of the elements of the mark.
Example: a video without sound
9. Multimedia mark
A multimedia mark is a trademark consisting of, or extending to, the combination of image and sound.
Example: a short video clip with sound.
10. Hologram mark
A hologram mark is a trademark consisting of elements with holographic characteristics.
Individual, collective or certification trademark?
As part of the application procedure, you also state whether your trademark is an individual, a collective or a certification trademark.
An individual mark is a mark that differentiates products or services of one company from those of another company. Most trademarks are individual.
A collective mark is a mark used by members of an association. The association is the owner of the collective mark and the mark is used to show that the products or services bearing it are provided by a member of the association. Typically, it is the type of trademark that associations of producers use, for example a group of farmers from a particular region. A collective mark may serve as an indicator of geographical origin. When an applicant applies for a collective mark, it must provide a copy of the regulations that will govern use of the mark. Filing such regulations is mandatory.
What must the regulations cover?
The regulations governing a collective mark must cover the following at least:
- who is authorised to use the mark;
- the conditions for membership of the association;
- the conditions of use of the mark, including sanctions.
Trademark law in the Benelux changed on 1 March 2019. One of the changes concerned the collective mark. The collective mark in force as of 1 March is different to the collective mark hither to in operation. The old-style collective mark comprised aspects of both the certification mark and the collective mark in force as of 1 March 2019. If you own a collective mark granted before 1 March 2019, you must choose either a certification mark or a new-style collective mark. More information
Certification marks show that the owner of the mark has guaranteed that the products or services bearing the mark have certain characteristics, for example that they have been produced in a certain way or comply with specific quality criteria. In principle, any conceivable characteristic can be certified in this way, with the exception of the geographical origin of these products or services. Furthermore, any entity can own a certification mark, provided that it does not supply the relevant products or services itself. Just as in the case of collective marks, the regulations of use governing the mark must be filed with the certification mark application. Formally, these rules are called the “regulations governing use and supervision” and filing such regulations is mandatory.
What must the regulations cover?
The regulations governing a certification mark must cover the following at least:
- who is authorised to use the mark;
- the characteristics certified by the mark;
- how the certifying body tests those characteristics and how it supervises use of the mark;
- the conditions under which the mark may be used and the sanctions that may be imposed.
The owner of a certification mark may not use the mark itself, but rather it ensures that those who it authorises to use the mark meet the conditions that it stipulated in the regulations.
The differences between certification and collective marks at a glance
Certification marks did not exist in the Benelux prior to 1 March 2019. Pursuant to a change in the law as of 1 March, applications may be filed not only for individual marks or collective marks, but also for certification marks.
|Certification mark||Collective mark|
|Owner is not allowed to market the products and services himself||Owner must be an association or a legal entity under public law|
|Serves to inform that the products or services meet certain requirements||Serves to inform that the products or services are provided by a business that is a member of a given organisation|
|Cannot certify geographical origin||Can indicate a geographical origin|
If you are not sure whether your trademark is an individual, collective or certification mark, please contact our Information Centre.
For which goods and services?
An important step in applying for your trademark registration is to select goods and services for which you wish to use your trademark. We call this the classification of a trademark.
The classification determines the scale of the monopoly that you receive for your trademark. Hence, your trademark right is only valid for the goods and services you mention. So, carefully consider which of these you select. Also, take into account that you will be required to use the trademark for the goods and services mentioned.
How does it work?
The classification of a trademark runs in line with an international standard, i.e. the Nice classification. This has a total of 45 categories (classes). You can make a selection from these when applying for a trademark registration. The cost of online application for a trademark in the Benelux for one class is 244 euros. If you want to select more, there will be a supplement per extra class. Read more about classification
Apply to register a trademark in four steps
Registration protects the value of your trademark. But several aspects, including costs, are also involved in registration of a trademark. Check the steps below for chances and opportunities in your case.