Trademark law offers protection to signs, such as names and logos, for the goods or services of a business. Trademarks indicate the origin of the products and services offered by a business. Furthermore, trademarks can offer a certain guarantee for the exclusivity and quality of the products and services offered. Therefore, trademarks are important means of communication for businesses in the course of trade.
A trademark has to be registered in the relevant trademark registry. For trademarks valid in the Benelux, this is the registry of the Benelux Office for Intellectual Property (BOIP). Trademarks valid in the EU, must be registered in the registry of the European Union Intellectual Property Office (EUIPO).
Not every sign can be protected by a trademark right. It is for instance necessary that the sign is distinctive. A trademark cannot be descriptive for the goods and services for which it is registered. For example, the sign ‘Apple’ is descriptive for apples and can therefore not be registered for apples. However, the sign ‘Apple’ is not descriptive for electronics and is therefore distinctive for computers.
A trademark that is less or not distinctive can acquire a distinctive character by intensive use. On the other hand, a trademark can also loose distinctiveness, if third parties are widely using the trademark without the trademark owner’s consent thereto. This is also referred to as detriment to the distinctive character of the trademark, or ‘dilution’.
The owner of a trademark can prevent all third parties, that do not have his consent, to use an identical sign for the same goods or services as which the trademark is registered for. For example, Banning can prevent anyone to use the sign ‘Banning’ for legal services.
Furthermore, the trademark owner can act against use of a sign that is not identical, but similar to his trademark: e.g. ‘Bannings’. In that case the goods or services at hand must be similar or identical. For example, legal services and legal recruiting. In such cases a likelihood of confusion is required to constitute trademark infringement.
If the owner has a well-known trademark, he can also act against the use of identical or similar signs, if the infringing party is free-riding with the success of his trademark. The owner can act against use of similar or identical signs, when the infringer takes unfair advantage of the distinctive character or repute of the trademark, or if he acts detrimental to the distinctive character or the repute of the trademark.
Our IP attorneys have extensive experience concerning trademark law. We assist various (international) businesses in respect to anti-counterfeiting, advise in relation to trademark registration and possible oppositions against trademark applications, as well as on all other aspects of trademark law.