Protecting trademarks outside the Benelux

Protecting trademarks outside the Benelux Information for entrepreneurs

Registration: the first step towards a successful business

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 Office for Intellectual Property (BOIP) your trademark will only be protected in the Benelux.

If you plan to operate successfully in other countries, it is equally important that you register your trademark in these countries as well. We can assist you in registering your trademark abroad.

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Why register abroad?

The Benelux Office for Intellectual Property is the official body for the registration of trade-

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.

marks, designs and drawings in the Benelux

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

countries. The Office’s

countries automatically. The legal protection of a trademark,

register already contains

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

almost one million

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

trademarks.

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

Each year the Office

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

registers around 2,500 international filings.

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.

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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 consequence of living in this area, particularly now that borders are open. When I first started operations in Germany, I worked mainly for Dutch emigrants. One thing led to the next.

Now I also have an office 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 benefits of all your investments in a trademark, logo and relevant matters.

For that reason I registered my trademark in Germany as well. The Benelux Office for Intellectual Property helped me do so. They assisted me in registering my trademark correctly via the World Intellectual Property Organisation.’

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What registration options are there?

How you register your trademark internationally depends on your sales market and your export strategy. Moreover, there are significant 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 definitely is worthwhile investing in engaging an intellectual property specialist to provide comprehensive advice and to jointly determine the best protection route for your specific 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 specific country? You can do so by applying for a national filing. You must file your trademark application with the competent body in that country in the official 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 Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain, via a single European trademark registration. By filing 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 Office 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 countries, you can register your trademark with WIPO, the World Intellectual Property Organisation, in Geneva, Switzerland.

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To do so, you will first require a Benelux registration. You can submit an application through the Benelux Office 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 filing a trademark registration application for a certain group of countries, for example in Africa.

For information, visit: www.aripo.org.

International organisations The Office for Harmonization in the Internal Market (OHIM) was established in 1996 and is situated in Alicante, Spain. OHIM is the official 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 substantial investments in e-business tools, facilitating online registration 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 international treaties. A single application offers trademark protection 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, entertainment 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 firm performed a search on my behalf to find 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 difficulty.’ 7

‘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!’

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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.

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 filed 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 specialist to perform a search of the Trademarks Register and to assist you in registering your trademark in Europe. A list of official European agents can be found on the OHIM website.

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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 difficult 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 official 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 office in the country of origin. In your case this is the Benelux Office 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 filed correctly and whether it is identical to your basic Benelux registration. We then forward your international application to WIPO.

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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 filing an application for an international trademark registration, and the required forms.

The Benelux Office for Intellectual Property provides comprehensive information about the procedures to be followed. However, the Office can and is only allowed to provide information. You may of course opt to arrange all trademark matters yourself, but remember that trademark 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 trademark 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 office addresses can be found on www.bmm.eu.

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

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 first 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 official 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.

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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 countries 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.

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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 office can finalise an international application, including any changes and renewals.

• It may be cheaper to register a trademark in a few countries 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 dependent on the basic registration for five years. This means that if within five years of international registration, the basic registration (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 registration because the trademark for these particular products and services has been refused.

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

General address and National Offices

Benelux Office for Intellectual Property Bordewijklaan 15 2591 XR The Hague The Netherlands

You can also phone our Information Centre: • from the Netherlands: 070 349 12 42 • from Belgium: 070 244 242 • from Luxembourg: 8002 538

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 Office 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 Office 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 financial support from the Office for Harmonization in the Internal Market (Trademarks and Designs).

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