Outside the Benelux

There are various options for protection outside the Benelux, each with their own particular pros and cons.

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A registration at BOIP provides protection in Belgium, the Netherlands, and Luxembourg. It is also possible to arrange protection outside the Benelux. This is advisable if your client sells goods and services outside the Benelux.

There are various ways of protecting your trademarks and designs outside the Benelux: national trademark, EU trademark or international trademark. Each has its own particular pros and cons. It is important to protect the trademark where your client uses it and needs it to be protected. Protection in a larger area could lead to unnecessary disputes, and not using the trademark or design in an area could result in the rights in that area being lost. That is why you should only protect a trademark where necessary.

National trademarks

If your client requires protection in one or more countries outside the Benelux, you can opt for national registrations in those particular countries. You will need to deal directly with the relevant authorities of those countries. If you file an application in another country within six months of a previous application (e.g. in the Benelux), you can claim the priority of your previous application for the later one. In that case, your application in the other country will have the same protection date as your previous one.

If your client only operates in one or a couple of countries outside the Benelux, it could be worth considering a national application. The downside is that if you apply in various countries, it can rapidly become a fairly expensive, complicated and time-consuming business. You will have to go through a separate procedure and make separate payment for each country. Also, you will generally need to communicate with the national office in its official language, and in some cases it is compulsory to designate a local representative or correspondence address.

Fortunately, more and more countries are signing up to international treaties that make it easier to protect your trademarks. If your client operates or is planning to operate in a larger number of countries, it could be worth applying for an international trademark or EU trademark.

National registration is the only option for countries that are not signatories to these international treaties.

International trademarks

You can have your trademark protected in countries that are signatories to the Madrid Agreement or Protocol with a single application. More than 110 countries in and outside Europe (including major economies such as the USA, China, India and Japan) are signatories to these treaties. You can opt for protection in all or just some of the member countries, and also for the whole of the EU with a single application.

International trademarks are registered by the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. International applications must always be based on a previous basic registration (e.g. a Benelux trademark or an EU trademark). The application is therefore always made via the originating office. More about international trademarks

Claiming priority

You can claim priority if your client wants protection in other countries within six months of the first application (e.g. in the Benelux). This means that more recent applications filed by your client (for a national trademark, international trademark or EU trademark) are given the same filing date as the first one.

Priority can be claimed for all countries that are signatories to the Paris Convention or members of the World Trade Organisation. In practice, this covers virtually all countries.

EU trademarks

An EU trademark offers protection for all (currently 28) countries of the European Union by means of a single application. EU trademarks are registered by the European Union International Property Office (EUIPO), established in Alicante, Spain.

One of the advantages of an EU trademark is that protection can be arranged for a large area for a relatively modest fee. A fee of 850 euro is charged for an online registration for a single class and 1,000 euro for a paper application.

A market populated by some 500 million people may sound attractive, but there is also a downside. Rights generally come with obligations, and a right covering such a large territory brings more obligations. An EU trademark is based on the 'all or nothing' principle and there are risks associated with protection in an area in which you do not operate. This applies not only to the registration phase, but also to maintenance and enforcement of the right. More about EU trademarks

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