Register a trademark outside the Benelux
Protection outside the Benelux territory is advisable if you plan to sell or offer your products and services in non-Benelux countries. There are various options available for protection outside the Benelux territory, which all have their own advantages and disadvantages. It is important to protect your trademark where you are using it and where protection is therefore necessary. Protection in a larger area can entail unnecessary risks, and can even cause you to lose your rights. Therefore it is advisable to seek protection only where it is necessary.
The trademark will be registered in a particular country by the competent body. This can be a sensible option particularly if you only operate in one or a few non-Benelux countries. However, the costs can increase considerably if you operate in a larger number of countries.
A single registration can provide protection in over 90 countries (of your choice). If you operate in a range of countries, this option quickly becomes considerably cheaper than multiple individual national registrations. The advantage over the EU trademark is that there are fewer risks, because problems in one country only affect the protection in that country. International trademarks are filed at the office where the basic registration took place. That would be BOIP in case of a Benelux trademark.
EU trade mark
A single application can provide protection in all countries of the European Union. This may be an appealing option if you operate in the EU (or a substantial part thereof). However, an 'all or nothing' principle applies. The registration process, maintenance and enforcement can entail some risks. EU trademarks are registered at EUIPO (Alicante, Spain).
EU trademark via International application
An EU trademark can be ‘built into’ an International registration. In this way you can obtain protection both in the whole of the EU as well as in non-EU countries (over 90 in total). An additional benefit is that the risks associated with the ‘all or nothing’ principle of the EU trademark are reduced. International trademarks are registered at the office where the basic registration took place. That would be BOIP in case of a Benelux trademark.
My company Earproof is specialised in hearing protection products for the music, entertainment and security industries. I registered the trademark myself. A law firm investigated on my behalf whether the trademark was still unique in Europe. I then registered my company name and logo with BOIP and registered my trademark online in Europe.
Peter van Galen, Earproof