If you also want protection outside the Benelux, you can apply for a European Union trademark which will be valid in all European Union Member States.
Before opting for a European Union trademark, it is important to weigh the pros and cons of this system with other alternatives, such as registration in the Benelux or in individual countries, either through the international registration system or through separate registrations in each country.
The choice of trademark type (Benelux trademark, European Union trademark or international trademark) will depend on various factors, including:
- the commercial activity;
- the type of products or services;
- the size of the envisaged market;
- the strategic options.
It should be borne in mind that, in order to remain valid, the trademark must be subject to genuine use.
As such, the Court of Justice of the European Union has held (in judgement C-149/11) that a European Union trademark is subject to "genuine use" when it is used in accordance with its essential function and with a view to maintaining or creating market shares in the European Community for the goods or services designated by that trademark.
In determining whether the conditions are met, the following relevant facts and circumstances in particular must be taken into account:
- the characteristics of the market in question;
- the nature of the goods or services protected by the trademark;
- the territorial and quantitative scope of the use, as well as the frequency and regularity thereof.
The Court of Justice indicated that in analysing “genuine use”, borders must be disregarded so that it cannot be ruled out that use limited to the territory of a single Member State may constitute genuine use. However, the Court acknowledged that, as a general rule, it is justified to expect that a European Union trademark, by virtue of the fact that it enjoys more extensive territorial protection than a national trademark, is used in a territory which is more extensive than that of a single Member State.
The major advantage of the European Union trademark system is the simplicity of the formalities during the registration phase.
A single application and a single procedure are sufficient to obtain trademark protection, which will be automatically valid in all current and future Member States of the European Union.
In addition, the content of protection is the same in all these countries, which would not be the case if you opted for separate national registrations. There is indeed a legal system for the European Union trademark that must apply uniformly to all Member States (see Regulation 2017/1001). This route may, in some cases, be cheaper, as there is only one filing fee to be paid rather than multiple national filing fees (and in some cases registration fees) that need to be paid per country.
However, one of the difficulties in obtaining (or maintaining) a valid European Union trademark may result from the "principle of uniqueness" that characterises the system. This principle means that the European Union trademark forms a single unit, and that any problem relating to the conditions for protection in a Member State may block the application or maintenance of the registration as a European Union trademark.
For example, a sign that is descriptive in a single Member State or a sign for which an earlier registration (or even use) exists in a Member State may be refused registration. Registering the sign as a European Union trademark could also be declared invalid lateron.
For some signs, a European Union trademark will, therefore, simply not be possible and it may certainly be useful to seek the advice of an expert before choosing this route.
You will find more complete and up-to-date information on the registration procedures and features of the European Union trademark system on the website of the European Trademark Office: European Union Intellectual Property Office (EUIPO), as well as a link to their newsletter.
