1. General

• What is a trademark?

  A trademark is a sign capable of distinguishing the goods and/or services of a company from those of other enterprises in the territory of registration.

• What can be a trademark?

  The trademark can be a word (combination of letters or numerals), a logo, a combination of verbal and figurative elements, a shape (3D), a position mark, a pattern, a colour or combination of colours, a sound, a motion mark, a multimedia mark, or a hologram.

• Can I register a colour as a trademark?

  It is possible to register a colour or combination of colours as a trademark, but it is not easily recognised as distinctive by the Offices. You might have to prove that your colour(s) has(ve) acquired distinctiveness through intensive use (costly).

• What are the benefits of registering a trademark?

  It gives you exclusive rights to use the trademark in the territory of registration, allowing you to prevent others from registering/using identical/similar signs for identical/similar goods and services. Furthermore, it is an asset for your company.

• How long does a trademark registration last?

  Usually, a trademark lasts for 10 years, and it can be renewed indefinitely upon payment of the renewal fees (in some territories there are additional requirements such as declarations regarding the use of the trademark).

• What is the priority claim?

  Once you have filed an initial trademark application, you can, in the next 6 months, extend its territorial scope of protection with retroactive effect, i.e., by claiming a so-called “right of priority.” By virtue of this, the later trademark application(s) will be considered as filed on the same date as the earlier application: third-party applications filed in the meantime cannot be invoked against the later application(s).

• Can I have a worldwide trademark?

  Via the WIPO (Madrid System), it is possible to register an International registration in which you designate several territories from the list of contracting parties. There are over 110 contracting parties to the Madrid System, i.e., more than 130 countries. The cost by territory can vary greatly.

• What is the procedure for registering a trademark?

  1. Prior search for earlier rights
  2. Application to register a trademark, which contains the mark, applicant details, territory, and scope
  3. Examination:
     • Formal requirements
     • Trademark registrability/distinctiveness
     • Identification of earlier rights
     • Benelux: no search for earlier rights by the Office
     • EU/UK: information to earlier right owners
     • US, AU, CN, etc.: Trademark refused based on identified earlier rights
  4. Publication of application:
     • In many territories, only formal requirements are examined before publication
     • Opposition period:
       • Benelux: 2 months
       • EU: 3 months
       • Others: vary from 1 to 3 months (sometimes extendable)
  5. Trademark is registered, and a certificate is issued.

• What happens if someone is opposing my trademark application?

  In Benelux and EU, we have a cooling-off period allowing possible amicable settlement. In the absence of amicable settlement: exchange of arguments, possible request for evidence of use of earlier mark registered for more than 5 years, Office decision, appealable within 2 months.

• How can I renew my trademark registration?

  It is possible to renew the registration 6 months before its expiry. If the request is filed after the expiry date within the 6-month-grace-period, there is an additional tax of about 50% of initial costs. It is possible to renew entirely or partially, but not to broaden the scope or modify the appearance of the trademark.

• What happens if I do not renew my trademark registration?

  If the registration is not renewed by the expiry date, there is a 6-month-grace-period (with surtaxes). After that, your rights are lost, and a third party could register the trademark.

• What should I do if my trademark is being copied/infringed?

  The first step is to send a cease-and-desist letter to the counterparty where the infringement is clearly identified.

  • If the infringement consists of a new trademark application: file an opposition
  • If the infringement consists of a registered trademark: file a cancellation action
  • If the infringement consists of the use of a confusingly similar sign: file legal actions in front of the Courts
  • If infringement is on social media, Amazon, App Store, etc.: file an online complaint
  • If infringement is via a domain name: file a complaint with CEPANI (.be), UDRP (.com), etc.

• Can I extend the territorial scope of my trademark protection?

  Yes, it is possible to extend it at any time as there is no novelty requirement.

• What is the difference between a trademark and a design registration?

  A trademark identifies the commercial origin of goods and services. A design registration protects the appearance (2D or 3D) of a product.

• Can I register a trademark before using it?

  It is possible to register a trademark before using it. Nonetheless, in many territories (among others Benelux, EU), the obligation of use starts 5 years from registration (in China, Japan: 3 years). You must be able to prove that the trademark is being used to avoid the risk of cancellation, or if you need to invoke your registration during proceedings.

• What are the goods and services with regard to a trademark?

  The filing form must identify the goods and services for which the trademark will be used. We are referring to the Nice Classification and the list of accepted wordings from each Office. The description can be limited after the application but never broadened.

• When do I use TM or ®?

  Use ™ when you are claiming a trademark, even if it hasn’t been formally registered. Use ® only after your trademark has been officially registered. It provides notice that the trademark is legally registered, granting the owner exclusive rights to its use for the registered goods and/or services. Using this symbol without registration is illegal in most jurisdictions.

2. Benelux

• Is it possible to register a trademark only in Belgium?

  A trademark application automatically covers the 3 countries of Benelux (Belgium, Netherlands, Luxembourg) and cannot designate only one country.

• What is the duration of the procedure to register a trademark in Benelux?

  It takes about three months to complete your trademark registration (in case there is no objection/opposition).

• In which languages can I file a trademark application in Benelux?

  You can file your application in English, Dutch, or French.

• Is it possible to internationally extend the protection of a trademark which started from the Benelux?

  Yes, it is possible for a Benelux registration if your address is in the Benelux (Head Office or another real and effective industrial or commercial establishment). An International registration must be based on a national/regional registration.

3. EU

• Is it possible to register a trademark only in one of the EU Member States?

  It is possible through the WIPO to make an international registration to protect your trademark in some selected EU Member States, but through the EUIPO the trademark is protected in the European Union as a whole (27 Member States).

• What is the duration of the procedure to register a trademark in the EU?

  It takes between 4 to 5 months to complete your trademark registration (in case there is no objection/opposition).

• In which languages can I file an EU trademark application?

  It is possible to file in any of the 23 languages of the EU. A second language shall also be chosen between the working languages: English, French, German, Italian, and Spanish. These two languages must be different, and the language of proceedings for oppositions or cancellations can only be one of the 5 working languages selected during the application (as first or second language).

• Is it possible to internationally extend the protection of a trademark which started from the EU?

  Yes, it is possible for an EU registration if your address is in the EU (Head Office or another real and effective industrial or commercial establishment). An International registration must be based on a national/regional registration.

• Does the EU trademark prevail over national trademarks?

  An EU trademark provides protection to its owner for all current EU Member States. A national trademark gives protection only in the Member State in which it has been registered. It is possible to claim the seniority of an older national registration in an EU trademark.

4. International

• Is it possible to register a worldwide trademark?

  An international trademark provides protection in the selected members to the Madrid System. It is possible to extend the territorial scope at any time (subsequent designations).

• What is the duration of the procedure to register an international trademark?

  Usually, it takes about 3 months to obtain an international trademark registration. From this point, the trademark is sent to each of the designated national Office, which proceeds to an examination according to its national requirements. The national Offices have a 12-month or 18-month period to perform this examination. Once the opposition period has elapsed, they issue a grant of protection, which is equivalent to a national registration. In the absence of objection within 12 or 18 months, the trademark is deemed accepted.

• In which languages can I file an international trademark?

  In English, French, or Spanish through the Office of your basic application.

• What is the procedure for registering an international trademark?

  First, you file a basic application where you have an effective address (Benelux, France, or EU). Usually, you wait for the confirmation of registration of the basic application. When possible, you file your international application within 6 months from the basic application to be able to claim priority. The international application reuses all or part of the basic application data and designates several territories (the costs are variable from one Member to another). After about 3 months, the International Trademark Office (WIPO) issues a registration certificate and sends the trademark registration to all the designated Offices for examination according to their national requirements. Within 12 or 18 months, the national Offices may issue objections, to which you will respond via national agents. They also often proceed with publication for possible opposition and issue a grant of protection, which will give you the same rights as a national TM registration. If the Office does not refuse within 12 or 18 months, the TM is deemed accepted. All the designations can be renewed at once at the end of each 10-year period. If there are use declaration requirements in some of the designated countries, the declaration must be filed to the national Office via a national agent.

• What is the Madrid System?

  It is a system which manages trademarks worldwide via the WIPO. By a single application, you can cover different countries which are part of the Madrid System. An International application does not systematically cover all the contracting parties to the Madrid System, but only the designated ones upon payment of a tax specific to each member.

5. Design

• What is a design?

  A design registration protects the external appearance of a product. The external appearance is characterized by visual features such as lines, contours, colours, shapes, textures, and ornamentation. The design requirements are:

  • Novelty: not divulgated more than 12 months ago (in EU)
  • Individual character: distinguishes itself sufficiently from what is currently on the market
  • Not defined by technical requirements

• What can be a design?

  It can be an industrial or handicraft product, a part of a product, a logo, packaging, a setting, a web or graphic design, a pattern or ornamentation, a map, a computer icon, typefaces, etc.

• What are the benefits of registering a design?

  The design will be protected for up to 25 years (in the EU). It is an asset for your company. You can act against substantially similar designs and send the design registration to the custom authorities for possible seizure of counterfeit goods.

• How long does a design registration last?

  A design registration lasts for 5 years and can be renewed 4 times for a maximum of 25 years (in the EU).

• Can I have a worldwide design registration?

  Through WIPO by using the Hague System, it is possible to register an International registration in which you can select various countries from the list of contracting parties. It is not necessary to file a national basic application.

• What is the procedure for registering an EU design?

  You can file an application for a single or multiple designs through the EUIPO. The application should contain up to a maximum of 7 views for each design, showing all external features. The pictures should have a neutral background and cannot contain symbols or texts. The application should identify the applicable Locarno class and can contain the identity of the designer (physical person) who created the design.

• How can I renew my design registration?

  A design registration lasts for 5 years and can be renewed 4 times for a maximum of 25 years (in the EU). It can be renewed 6 months prior to its expiry. The renewal taxes increase slightly at each renewal.

• What happens if I don’t renew my design registration?

  If the expiry date is missed, there is an additional 6-month-grace-period, during which it is still possible to renew the registration with a 50% surtax. After the grace period, the protection lapses, and you will lose your exclusive right on this design.