Protecting trademarks

outside the Benelux

Information for entrepreneurs

Registration: the fi rst steptowards a successful business

2

Cross-border business is a matter of routine for many entrepreneurs. Traditionally, people in Belgium, the Netherlands and in Luxembourg have regularly conducted business across their own borders. International transactions are concluded faster and more frequently than in the past as a result of the open borders and easy worldwide communications.

By registering your trademark with the Benelux Offi ce for Intellectual Property (BOIP) your trademark will only be protected in the Benelux. If you plan to operate successfully in other coun-tries, it is equally important that you register your trademark in these countries as well. We can assist you in registering your trademark abroad.

3

Why register abroad?

If you have cross-border operations, you also need protection outside the Benelux countries. It is important for you to take account of the commercial and legal environment in the country to which you wish to export your products or services, but it is equally important to take account of intellectual property rights when determining your export strategy.

In fact, your Benelux trademark registration is not valid in other

countries automatically. The legal protection of a trademark,

design or patent only applies in the countries where the regi-

stration was made. If you submit an application to register your

trademark in the Benelux, you will however be granted a priority

term of six months in which to register your trademark abroad.

A registration outside the Benelux can be assigned the same

date as your basic registration in the Benelux. This is referred to

as priority or as the right of priority. It means that subsequent

applications (whether for Benelux, International or Community

trademarks) acquire the same protection dates as your initial

application.

The Benelux Offi ce for

Intellectual Property is

the offi cial body for the

registration of trade-

marks, designs and

drawings in the Benelux

countries. The Offi ce’s

register already contains

almost one million

trademarks.

Each year the Offi ce

registers around 2,500

international fi lings.

4

Doing business at the border

‘My contracting company is situated in the East of the Netherlands, close to the German

border. I operate in two countries, which makes my business all the more exciting, and

it has also enabled me to expand my market. Cross-border business is a natural conse-

quence of living in this area, particularly now that borders are open. When I fi rst started

operations in Germany, I worked mainly for Dutch emigrants. One thing led to the next.

Now I also have an offi ce in Germany, and over half of my clients are German.

If you plan to do business abroad, you need to organise all kinds of matters as well as

licences. Trademark protection will probably not be your immediate priority but it does

belong on your to-do list. You will not be familiar with that particular foreign market. You

may unknowingly even be using someone else’s company name. Registration will help

you reap the benefi ts of all your investments in a trademark, logo and relevant matters.

For that reason I registered my trademark in Germany as well. The Benelux Offi ce for

Intellectual Property helped me do so. They assisted me in registering my trademark

correctly via the World Intellectual Property Organisation.’

5

What registration options are there?

How you register your trademark internationally depends on your sales market and your export strategy. Moreover, there are signifi cant differences in legislation and procedures between the various countries. The language in which you are required to apply for a trademark registration may also form a barrier. It defi nitely is worthwhile investing in engaging an intellectual property specialist to provide comprehensive advice and to jointly determine the best protection route for your specifi c situation. A combination of different protection routes is also possible.

The various options are listed below:

1. National registration

Would you like to register your trademark in one specifi c

country? You can do so by applying for a national fi ling. You

must fi le your trademark application with the competent body

in that country in the offi cial country language. A list of national

bodies can be found on www.wipo.int/members/en.

2. European registration

You can have your trademark protected throughout the whole of

Europe by the Offi ce for Harmonization in the Internal Market

(OHIM) in Alicante, Spain, via a single European trademark

registration. By fi ling a single trademark application your trademark

will become a Community Trade Mark, which is protected in all EU

Member States. For information on the procedure to be followed,

please contact the Benelux Offi ce for Intellectual Property. The

OHIM website address is: oami.europa.eu.

3. International registration

If you wish to register your trademark for a number of countries

within the European Union and/or a number of non-EU coun-

tries, you can register your trademark with WIPO, the World

Intellectual Property Organisation, in Geneva, Switzerland.

6

To do so, you will fi rst require a Benelux registration. You can

submit an application through the Benelux Offi ce for Intellectual

Property for one or more of the over 80 countries that are party

to the Madrid System for the International Registration of

Trademarks. The WIPO website address is: www.wipo.int.

4. Other options

In addition to the options referred to above, a further option

exists for fi ling a trademark registration application

for a certain group of countries, for example in Africa.

For information, visit: www.aripo.org.

6

International organisations

The Offi ce for Harmonization in the Internal Market (OHIM) was

established in 1996 and is situated in Alicante, Spain. OHIM is

the offi cial European Union agency responsible for registering

trademarks or designs in the European Union. After registering

your trademark or design with OHIM you will hold a Community

trade mark or a Community design. The OHIM makes substan-

tial investments in e-business tools, facilitating online registra-

tion for entrepreneurs in Europe.

The World Intellectual Property Organisation (WIPO) is based in

Geneva, Switzerland. WIPO, a specialised agency of the United

Nations, has 184 member states and administers 23 interna-

tional treaties. A single application offers trademark protec-

tion in more than 80 countries via the Madrid System for the

International Registration of Trademarks. Apart from the United

States of America, the Madrid System also covers Japan and

Australia, as well as countries such as China and Russia.

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Trademark registration in Europe

‘My company Earproof specialises in hearing protection products for the music, entertain-

ment and security industries. It is crucial for me to build up my brand. I communicate with

a wide audience through the Earproof brand, not only by offering excellent products but

also by providing information about hearing and the need for hearing protection. First,

I approached music market professionals. I could then tell consumers that numerous

famous DJs also use Earproof protection. I have established a solid reputation and a good

name for my brand.

I registered the trademark myself. A law fi rm performed a search on my behalf to fi nd out

whether the trademark was still unique in Europe. I then registered my company name

and logo with BOIP and subsequently registered my trademark online in Europe. If you

know in which categories you wish to protect your brand, you can register the trademark

yourself without any diffi culty.’

8

‘Vino vidi vici’ versus ‘Vodka vidi vici’

‘As a wine merchant I was looking for a brand name for my own ‘house wine’. Following

a brainstorm session with friends, we came up with ‘Vino vidi vici’. I immediately applied

for a Benelux trademark registration on the Internet. When the trademark was registered,

we enjoyed a celebratory glass of champagne.

A few years later I discovered a special offer for ‘Vodka vidi vici’ at the local liquor store. I called

BOIP straight away and enquired whether this was allowed. They said that the trademark had

been published less than two months before and that I could still lodge an opposition.

I submitted a letter explaining in detail my objections to ‘Vodka vidi vici’. A few months later

I received a letter stating that my opposition was deemed well-founded. People might be

under the impression that the two brands belonged to the same company. The Vodka vidi

vici trademark was deleted and the opponent was ordered to pay the costs of EUR 1,000.

Reason enough for another celebration!’

9

Once an application for a trademark registration has been

published, other parties holding previous trademark rights may

oppose your trademark application. This is referred to as an

opposition. In the Benelux (BOIP) oppositions may be lodged

for a period of two months and in Europe (OHIM) three months

after the publication of your trademark application. Holders of

previous trademark rights usually lodge an opposition if your

trademark and the products and services for which you have

fi led a trademark application closely resemble theirs. This could

severely undermine your sales strategy in that country. You may

even be forced to abandon your sales activities altogether and

pay damages. Incidentally, it would also make sense to check

what exactly your trademark means in the country concerned.

If your trademark has a different, and perhaps even a negative

connotation in that country this could adversely affect your

sales.

To give you an idea of European trademarks that have already

been registered, you can consult the OHIM Trademarks Register

on oami.europa.eu. However, expertise will be needed to

assess all of the risks involved in introducing an international

trademark. We would therefore advise you to engage a specia-

list to perform a search of the Trademarks Register and to assist

you in registering your trademark in Europe. A list of offi cial

European agents can be found on the OHIM website.

Is my trademark available internationally?

If you want to export your products, it is important to check whether a competitor may have already registered a similar trademark in the country concerned. A national trademark or trade name may also pose a problem for your registration in the European register. We would therefore advise you to perform a search of the Trademarks Register before entering the market in another country.

10

Description of the procedure

National registration

The basic principles for national registration are generally the

same as those for a Benelux registration, but the procedures and

costs differ per country. It is therefore diffi cult to provide any

general information on these in this brochure.

European registration

The entire European trademark registration procedure (for a

Community trade mark) takes approximately 12 to 18 months,

provided an opposition has not been lodged. You may submit

your application for a trademark registration directly to OHIM

or engage a European trademarks agent. The application can be

made in any of the EU’s 22 offi cial languages. OHIM corresponds

in German, English, French, Italian or Spanish.

The fees charged by OHIM change regularly. You are required to

pay an application fee as well as a registration fee. The standard

fee charged for the online application and the registration of a

Community trade mark is EUR 900. An additional EUR 150 is

charged for an application submitted on paper.

International registration

An international trademark registration is always processed by

the relevant offi ce in the country of origin. In your case this is

the Benelux Offi ce for Intellectual Property. The application for

trademark registration is made in English or French. We will

check whether your application for an international trademark

registration has been fi led correctly and whether it is identical to

your basic Benelux registration. We then forward your interna-

tional application to WIPO.

11

The costs of an international application depend on a number of

factors, including the number of countries where you wish to

register your trademark. You pay a basic WIPO fee and a country

fee, which may differ per country. An estimate of the costs of

your applications can be obtained via www.boip.int. This website

also offers detailed information about fi ling an application for an

international trademark registration, and the required forms.

The Benelux Offi ce for Intellectual Property provides

comprehensive information about the procedures to be

followed. However, the Offi ce can and is only allowed to

provide information. You may of course opt to arrange all

trademark matters yourself, but remember that trade-

mark law is a specialist domain. Many companies do not

have this specialist knowledge available in-house. It

would therefore make sense to seek advice from a

trademarks agent or a lawyer specialising in intellectual

property. They know all the ins and outs of trademark law

and the relevant case law and literature. They will be able

to advise you on whether an existing registered trade-

mark could pose a problem for your new trademark. They

will also advise you on all the legal aspects of trademark

protection and will mediate in the event of disputes.

Trademark specialists have joined forces in the Benelux

Trademark and Design Association (BMM). Their offi ce

addresses can be found on www.bmm.eu.

12

National registration

Advantages

• National registration could be more advantageous if you

export to only one country.

• You may claim priority if you submit this application within

six months of your Benelux application and the country

is a member of the Paris Convention for the Protection of

Industrial Property. This Convention was one of the world’s

fi rst intellectual property treaties.

Things to bear in mind

• For countries that are not members of the Madrid System,

you may only register a trademark via the national body in

that country. Canada and the countries in South America are

examples of such countries.

• The application must be submitted in the offi cial language of

the country concerned. If a translation is required, the costs

could be considerable.

• Sometimes it is mandatory to have a branch in the relevant

country.

Advantages and things to bear in mind in respect of the various options

13

European registration

Advantages

• Based on one single procedure your trademark will enjoy

protection throughout the entire European Union. This saves

a great deal of administrative work.

• The application is relatively inexpensive.

• The existing national registrations can be incorporated. This

means that if you submit a new European application, you

can invoke the registration of your trademark in one or more

European countries. If the European trademark is registered,

you may have the previous registrations cancelled while the

previous rights will continue to apply.

Things to bear in mind

• A European application procedure takes a great deal of time.

• If your European application is refused, the refusal will

automatically apply to all countries in the European Union.

However, you do have the option to convert your European

trademark application into national applications for the coun-

tries where your application has not been refused. A fee will

be charged.

• One existing trademark registration anywhere in Europe –

whether in Cyprus or Germany – could already impede the

European registration of your trademark.

• It could be costly and a time-consuming activity to maintain a

registration in 27 countries. There is an increasing risk that

unforeseen legal steps will have to be taken in foreign countries.

The best option would be to engage a specialist to help you.

14

International registration

Advantages

• Each individual country assesses an application for an

international trademark registration. If a problem arises in

one country, the application for trademark registration in the

remaining countries will be retained.

• The same national offi ce can fi nalise an international applica-

tion, including any changes and renewals.

• It may be cheaper to register a trademark in a few coun-

tries initially, and then to extend the registration to further

countries.

• If you apply for international registration within six months of

your Benelux registration, you may claim priority. This means

that the application date of your Benelux registration will also

apply to your international registration.

Things to bear in mind

• An international trademark registration will remain depen-

dent on the basic registration for fi ve years. This means that if

within fi ve years of international registration, the basic regi-

stration (in your case the Benelux registration) is cancelled for

whatever reason, for instance because you lose an opposition

procedure in the Benelux, the international registration will

automatically be cancelled at the same time. This also applies

to any restrictions imposed on your basic registration – for

example, if some of the products and services for which you

registered your trademark need to be deleted from the regi-

stration because the trademark for these particular products

and services has been refused.

15

Contact

For general information, forms, price lists, and to request services, visit our website: www.boip.int.

You can also phone our Informa-tion Centre: • from the Netherlands:

070 349 12 42• from Belgium: 070 244 242• from Luxembourg: 8002 538

General address and National Offi ces

Benelux Offi ce for Intellectual Property

Bordewijklaan 15

2591 XR The Hague

The Netherlands

T +31 70 349 11 11

F +31 70 347 57 08

info@boip.int

www.boip.int

Federal Public Service Economy

SMEs, Self-Employed and Energy

Belgian Offi ce for Intellectual Property

North Gate III - Koning Albert II Laan 16

B-1000 Brussels - Belgium

T +32 2 277 52 97

F +32 2 277 52 77

piie.trademarks@economie.fgov.be

http://economie.fgov.be/opri-die.jsp

Ministère de l’Economie et du Commerce extérieur

Offi ce de la propriété intellectuelle

Boulevard Royal 19-21

L -2449 Luxembourg - G.D. Luxembourg

T +352 247 841 87

F +352 222 6 60

dpi@eco.etat.lu

www.eco.public.lu

This brochure was compiled with fi nancial support

from the Offi ce for Harmonization in the Internal

Market (Trademarks and Designs).