Before registering a trademark, it is best to answer a certain number of questions. In order to do so, you should seek advice from an expert!
Choose a “sign” and determine for which products or services you want protection
In order to obtain protection for the trademark, you must design or think of a sign which can serve as a trademark (see the examles of trademarks).
Next, you must determine for which products or services you would like to register the sign. A good definition of these products or services is important since the exclusive right which you will acquire is limited by the principle of speciality. Benelux trademark authorities (and in most other countries) use an international list to classify products and services into different classes: you must use the same list.
Verify that the chosen signs meet the conditions of protection
Before registering a sign and beginning the procedures (which cost money), we recommend that you first verify whether the chosen sign meets the conditions of protection.
You must also make sure that the sign is still available for the products or services which interest you! To do so, you may access the online trademark register of the Benelux Office for Intellectual Property (a free service), which contains not only Benelux trademarks but also community and international trademarks as well as pending requests. You may also ask (either before or at the same time) the Benelux Office to check whether an identical or similar sign to the one you are requesting has already been registered, although you are not required to do so. This is highly recommended, as you do not perform this search yourself! The results of this search, called a search for prior art, will be provided to you for information purposes only.
The Benelux Office cannot invoke any prior trademarks in order to refuse your request. However, the holder of a prior trademark may introduce an opposition procedure to prevent you from registering your trademark. We recommend that you reconsider your request if it seems that someone else has registered an identical or similar trademark for identical or similar products or services.
Make sure that trademark protection is the best option
For each case you should check whether trademark protection is the best option for you. When you market products or are active in the service sector (insurance, consulting etc.), it is generally recommended that you register the sign with which you hope to identify your products or services as a trademark.
Choosing trademark protection obviously involves a certain number of costs. There is the filing tax, including any potential expert fees. Every ten years, a renewal tax must also be paid. These taxes must be paid for each country (or territory) in which your trademark is protected. If you check the rate of Benelux fees (and the same thing applies for community trademarks), however, you will notice that these fees are not very high for obtaining a title which grants you exclusive rights to use a sign. However, you must not forget that, even after registration, you must respect certain acquired trademark rights. The legal procedures required for the protection of the trademark against any potential threats can be one of the main sources of expenses.
You could also decide not to register the sign as a trademark and simply use the sign, perhaps also as a trade name, if you only plan on using it on a local level. In this case, if the sign is registered as a trademark later on by a third party, you can still continue to use the sign.
Or perhaps there are other possible options in certain cases? This could be marketing under a collective trademark, obtaining a quality label, using a designation of origin or geographical indication, obtaining a license for another trademark or taking on a franchise.
Choose where you would like to protect your trademark
If you would like protection in Belgium, a Benelux trademark is required (there are no “Belgian trademarks”). It gives you automatic rights in Belgium, Luxembourg and the Netherlands.
If you would also like protection outside of the Benelux, you can also choose a community trademark, which provides protection in the member states (current and future) of the European Union. If you would like to protect your trademark outside of Europe, the international procedure could be an interesting solution. According to the location and number of countries where you would like protection, the international procedure (a single procedure for all countries) may be more or less advantageous than filing separate requests in each country.