Table of Contents
Characteristics of the trademark rights
An exclusive right
A registered trademark gives its holder the exclusive right to use it. This means that he alone has the right to use, or not use, the protected sign or to authorise a third party to use it. Please note that if within five years of registration the trademark holder does not use it for the goods or services for which it is registered, he runs the risk of losing the protection conferred by the trademark (see end of the trademark).
In addition, the holder of the trademark may transfer it (e.g., sell it) or licence it (grant a third party the right to use the trademark). He also has the right to bring proceedings against third parties who infringe the trademark, and to invoke the invalidity of subsequent registrations of trademarks regarding the same or a similar sign. If third parties wish to register identical or similar signs as trademarks for identical or similar products, the owner of an earlier trademark may bring opposition proceedings before the Benelux Office for Intellectual Property (Benelux trademark) or the European Union Intellectual Property Office (European Union trademark) and request that more recent applications for registration be rejected.
Application of the principle of territoriality and speciality
The exclusive right of the trademark holder is, however, not absolute.
First, the trademark is only protected in the territory for which registration was obtained (principle of territoriality). In other words, a Benelux trademark gives the holder an exclusive right to the sign only in the three Benelux countries, but not in France, Sweden or Japan, for example, unless a registration has also been obtained in these countries. (See also European Union trademark or international trademark). Through the priority right, it is possible to prevent other parties from registering the sign in other countries, within six months after the first filing.
Secondly, the registered trademark only confers exclusive rights when the sign is used in relation to the goods or services for which it has been registered. The trademark is, therefore, never protected in absolute terms. This rule - known as the principle of speciality - implies that several companies may have trademark rights to the same sign within the same territory, but for different goods or services (for example, the trademark "Lotus" is registered as a trademark for biscuits, cars and toilet paper by different companies).
There is an exception to this rule for trademark holders who have acquired a certain reputation. The latter may act beyond their commercial domain and oppose the use or subsequent filing of their sign for goods or services that are not similar (see hypothesis 3 below).
Scope of protection
The holder of the trademark has the exclusive right to use the trademark for the goods or services for which he obtained a registration. The essential characteristic of this exclusive right is its prohibition function. Other parties may not use the same or a similar sign without the consent of the trademark holder. Third parties may not, for example, apply this sign to their products or packaging or use it in their advertising.
The exact scope of the exclusive right - and the right of prohibition - depends on a number of factors. The use which the trademark holder may take action against must in principle be in the course of trade. This concept of "course of trade" is rather broad and includes any use in a commercial or professional activity for which an economic advantage is pursued. It does not include purely private use or use for purely scientific purposes.
In the event of use in the course of trade, a distinction must be made between four situations in which the holder of a Benelux or European Union trademark may take action:
- the use of an identical sign for identical goods or services;
- the use of an identical or similar sign for identical or similar goods or services: In this situation, the trademark holder must also prove that there is a risk of confusion for the consumer as to the origin of the goods or services in question. The risk of confusion also applies where the confusion results from the association of the sign with the earlier trademark.
- the use of an identical or similar sign for identical, similar or dissimilar goods or services, where the trademark has a reputation in the territory concerned.
The holder of a reputable trademark must also prove that, by using the sign without just cause, the third party has an unjustified advantage because of the distinctiveness or reputation of the trademark (dilution or parasitism).
For example, the use of Klarein for cleaning products was considered as an infringement of the famous Clareyn genever trademark because of the negative impact on the genever trademark. There was a risk that the consumer was less likely to be attracted to genever that reminds him of a detergent.
The third party may defend itself by claiming that it has a justified reason to use the reputed trademark, but this defence is not easily accepted.
- For the Benelux trademark, in addition to these three cases of use of the trademark in the course of trade, there is a fourth situation in which the trademark holder may take action, even if the trademark is not used in the course of trade. This is the case for:
the use of an identical or similar sign in any way other than "as a trademark". This situation refers to the use of the sign by third parties not to distinguish their goods or services, but for other reasons. For example, third parties use the trademark as decoration (e.g., a striped pattern), in a film or other media, in a trade name or in advertising. Or, third parties use the trademark on the Internet. This could concern a domain name registration by a "cybersquatter", or the mention of a trademark in the metatags of a web page. As in hypothesis 3 above, the trademark holder will have to prove that the use of the sign takes unfair advantage of the distinctiveness or reputation of his trademark or that such use is detrimental to him and that the third party in question cannot invoke any valid reason to justify such use.
However, there are several exceptions where the use of another party's trademark does not constitute an infringement of the trademark.
Transfer and licence
The trademark holder may decide at any time to transfer his trademark - e.g. by selling it. Companies will regularly consider this option when analysing their trademarks portfolio. For a transfer 'inter vivos' to be valid, it must be made in writing and cover the entire Benelux territory. In order for the transfer to be enforceable against third parties, an extract from the deed recording it must also be registered in the Benelux Trademarks register.
The trademark holder can also benefit from the economic value of his trademark by granting a right of use - a licence - to third parties. This licence is laid down in a contract setting out in detail the conditions of use (exclusive or non-exclusive use, for all or part of the products or services concerned, duration, territorial scope, etc.). However, a written document is not required for the validity of the licence. Nonetheless, the registration of an extract from the document recording the licence in the Benelux register is necessary to make the licence enforceable against third parties.
The specific content of contracts governing transfer and licence is generally freely negotiable. However, the rules of competition law must be respected.
Taking action against trademark infringements
If a third party infringes the trademark, i.e. if they perform one of the acts described under the heading "Scope of Protection", without any exception or limitation being applicable, the trademark holder may bring proceedings against this third party for counterfeiting. The latter will primarily request that the infringing act be halted, but a court may also order other measures. More information on the enforcement of rights.
Taking action against subsequent trademark registrations
The holder of a trademark has the right to prevent subsequent registration of signs that fall within the scope of protection of his trademark. This can first be done during the registration procedure by filing an opposition against the registration of a trademark which came later than its own. If the later (more recent) trademark has nevertheless been registered, the holder may initiate proceedings to have the trademark declared invalid. The first filing therefore rendered the sign unavailable.
