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Before applying for a trademark registration, it is advisable to first answer a number of questions. In that regard, it may be helpful to seek the advice of an expert!
Choose a "sign" and determine for which products or services you want protection
In order to obtain trademark protection, you must design or think up a sign that can be used as a trademark (see examples of trademarks).
Then, you need to determine for which goods or services you wish to register the sign. Describing these products or services is important, because the exclusive right you are going to acquire is limited by the specialty principle. The Benelux trademark authorities (and authorities in most other countries) use an international list to classify the goods and services into different classes that you need to use.
Check if the chosen sign meets the conditions for protection
Before registering a sign and starting procedures incurring costs, it is advisable to first check whether the chosen sign meets the conditions for protection.
Also check that the sign is still available for the products or services you have in mind! To do so, you can consult the online Trademarks Register of the Benelux Office for Intellectual Property free of charge, which contains not only Benelux trademarks, but also European Union and international trademarks, as well as pending applications. Before applying for a trademark, it is strongly recommended to check whether a sign identical or similar to the trademark you are applying for has not already been registered.
The Benelux Office cannot itself invoke the existence of earlier trademarks in order to refuse your application. The holder of an earlier trademark, however, could initiate opposition proceedings to prevent the registration of your trademark. It is, henceforth, advisable to reconsider your application, if it appears that someone else has registered an identical or strongly similar trademark for identical or similar goods or services.
If you wish to check whether a trademark has already been registered or filed in other European Union countries, at the EUIPO (European Union Intellectual Property Office (trademarks and designs)) or in some other partner countries, a new search tool has been made available to the public by the EUIPO, in partnership with national trademark offices: the TMview database.
This database contains information on trademark applications and registered trademarks from national trademark offices in the European Union, from the EUIPO and a number of international partner offices outside the EU (including the United States, Russia and South Korea).
TMview displays various trademark information. This information is accessible free of charge, available 24 hours a day, seven days a week, updated daily by the trademark offices and available in 27 languages.
Make sure that trademark protection is the best option
When you sell products or when you are active in the services sector, it is in principle recommended to register the sign with which you wish to identify your goods or services as a trademark. However, it is advisable to make a case-by-case analysis as to whether filing a trademark is the best option for you. You can take into account the following elements:
Trademark protection entails costs
First, there is the filing fee - with or without expert fees. Every ten years a renewal fee must be paid as well. These fees must be paid for each country (or territory) in which your trademark is protected. If you look at the Benelux tariffs (and the same applies to a European Union trademark), however, you will see that these tariffs for acquiring a title that grants you exclusive rights over a sign are not very high. However, don't forget that, even after registration, you must be careful to have you trademark rights respected by third parties. Legal proceedings required to protect the trademark against possible infringements may account for one of the main items of expenditure.
Using the sign without registering it as a trademark
However, you may consider not registering the sign as a trademark and simply using it, possibly also as a trade name, if you plan to be active only at a local level. In this case, a subsequent trademark registration by a third party on the sign you are using as a trade name cannot prevent you from continuing to use the sign. Nevertheless, you will not have a trademark right to prohibit third parties from using the same sign for their goods or services.
- selling under a collective trademark
- obtaining a quality label
- using designations of origin or geographical indications
- using another party's trademark under licence
- taking a franchise
Choose where you want to protect your trademark
If you want protection in Belgium, a Benelux trademark is the ideal solution (as there is no such thing as a "Belgian trademark"). It automatically gives you rights in Belgium, Luxembourg and the Netherlands.
If you also wish to obtain protection outside the Benelux, you can opt for a European Union trademark, which gives you protection in all (current and future) Member States of the European Union. If you want to protect your trademark outside Europe, then the international procedure might be an interesting solution. Depending on the location and number of countries where you want to have protection, the international procedure, which is unique, may be more or less advantageous than filing individual national applications in the countries concerned.