3 Trademarks
3.1 Introduction
A trademark is a sign that is used to distinguish the products or services of a company. Entrepreneurs and companies use trademarks to show the origin, quality or image of their products and services. A trademark can be a colour, name, word, logo, shape, number, pattern or sound. It is important that people can recognize a trademark as a sign of a certain company.
It is obligatory that trademarks must be registered for specific products ans services. A trademark to be used in the Benelux countries can be registered at the Benelux Office for Intellectual Property (BOIP). For companies operating in the European market trademark registration at the European Union Intellectual Property Office (EUIPO) can be more appropriate, since an EU trademark is valid in all EU member states. Multinational firms can require a globally recognized trademark at the World Intellectual Property Organisation (WIPO) based upon a Benelux or EU trademark. A trademark for the Netherlands only does not exist.
A trademark is valid for 10 years and can be extended indefinitely by paying renewal fees. A trademark can be used to act against other companies that use an identical or similar sign in the same market. It is however important that a trademark is normally used. If a trademark is not used in the market, the trademark right can be cancelled after a certain period.
3.2 Trademark law
Rules and regulations for Benelux trademarks are described in the Benelux Convention on Intellectual Property (BCIP). A number of articles that will be further elaborated can be found in Parts of the Benelux Convention on Intellectual Property (trademarks).
For EU trademarks rules and regulations are described in the EU trademark directive (EUTMR). A number of articles that will be further elaborated can be found in Parts of the Regulation on the European Union trade mark.
3.3 What is a trademark?
Trademarks exist since ancient times. The English word for trademarks is branding and originates from branding cattle thus enabling identification and differentiation from other flocks of cattle. Thereby enabling the source of origin of the cattle. As such this function of origin still is regarded as an important function of trademarks.
Nowadays trademarks also have other functions. A trademark can be used for advertisement to inform the public and customers about the quality or image of the products or services. A trademark is also used as a means to communicate with consumers in the market place.
Following Article 2.1 BCIP or Article 4 EUTMR trademarks can be composed by any signs, in particular by words. For example names of persons or drawings, letters, numbers, colors, shapes or packages of products, or sounds on the condition that these trademarks:
- distinguish the companies products or services from those of other companies,
- can be shown in the trademark register in such a way that it will allow competent authorities and the general public to determine the protection of the object granted to the trademark holder clearly and accurately.
Everyday we see traditional trademarks like word marks and figurative marks containing word elements used by companies. For example the logos and brands of Coca Cola, Apple, Google and Bugaboo (see figure 6). But different sizes of trademarks are on the rise, like a:
- position trademark, for example the red sole of a pump,
- shape trademark, for example the Toblerone chocolate packages,
- sound trademark, like the lions roar of film studio Metro-Goldwyn-Mayer
- motion trademark, like the swimming orange fish in the Dutch National lottery, see video 1
- multimedia trademark, like soccer club Feyenoord which is made both from pictures and sounds, see video 2
3.4 Requirements of a trademark
There are some basic requirements to register a trademark application. These requirements can be found in Article 2.1 BCIP or Article 4 EUTMR. The most important requirement is that a novel trademark has distictive character. Besides, trademarks must be registered in a national or international trademark database in a clear and concise way. This will enable legal certainty. In such a way trademark registers will guarantee that third parties can browse through these databases and obtain a clear view about what the trademark protection refers to.
A trademark has to be registered for specific products or services. You can read more in Registration of trademarks for products or services.
There are some basic principles to refuse the registration of trademarks which are mentioned in Article 2.2bis BCIP or Article 7 EUTMR; for example descriptive signs or signs and figures which are against good morals or undermine the public order can not be registered. During the trademark application procedure the office, where the trademark is applied for, will review these principles. If one of the grounds for refusal applies, the trademark will be refused.
3.4.1 Distinctive character of a trademark
The most important requirement for a trademark is to enable customers to distinguish trademarked products and services from one company versus products and services from a different company, for example a competitor. A trademark is actually a name for a product or service, just as people have a name. This is referred to as distinctive character.
This distinctive character can vary and change in time. A sign that was originally too descriptive and as such not distinctive can become so due to repetitive use over time. We refer to this process as acquired distinctiveness. As an example see Booking.com or Thuisbezorgd.nl. Both names initially have been too descriptive to pass the requirements for trademark registration, but over time people have come to get to know them as a trademark. This process of acquired distinctiveness will eventually enable the registering of these particular trademarks.
The opposite also applies. A distinctive sign can lose its distinctiveness when people start using it as generic or name for a certain species. This process is called becoming a generic name. In the Netherlands Hagelslag was a trademarked product for a specific spread on bread, however the general public does not regard this product originating from a particular company anymore but as a generic name. Other examples are the bikini or trampoline.
In order to prevent that a trademark will become a generic name it is important that the trademark holder will stop third parties using their trademark as a generic name. We will discuss such possibilities in Trademark enforcement.
3.4.2 Registration of trademarks for products or services
At the time of application the trademark will be registered for specific products or services using the so-called Nice classification system. This classification system has 45 classes, whereby class 1 till 34 are related to products and class 35 till 45 are related to services. During the process of the application for a trademark a company can apply for one or more classes. Payment of trademark fees depends on number of classes, so a company will pay an additional fee once they apply for an additional classification. Each Nice classification describes a group of products or services for a trademark registration. You can have a look at these Nice classifications in Nice classification.
Since a trademark can be registered for specific products or services it is possible that one trademark can be used by different companies operating in different niche markets or regions. For example Ajax is a trademark for fire extinguisher equipment, but also for a soccer company and cleaning materials. So, although the name Ajax is literary the same, used signs of the respective trademarks vary much and contain enough distinctiveness amongst themselves.
3.4.3 Absolute grounds for refusal
With every application for a trademark registration, the sign that will be registered is tested on the basis of a number of legal refusal and exception grounds, also called absolute grounds for refusal (see Article 2.2bis BCIP or Article 7 EUTMR). A sign is refused for registration as a trademark, if the sign:
- is descriptive;
- lacks distinctive character;
- is misleading;
- contains the emblem of a state or international organisation protected by article 6ter of the Paris Treaty;
- should be protected by design or patent rights;
- is contrary to morality or public order;
- refers to a protected geographical indication or protected designation of origin;
- refers to or resembles closely a protected plant variety name.
Most common ground for trademark refusal is when the sign is too descriptive. A sign is descriptive when it merely consists of signs and names serving and promoting the characteristics of products or services for which the trademark protection has been applied for. The common ground for refusal is that such too descriptive indications have to be able to be used freely. A trademark application for Apple cannot be granted for apples as a category of fruits or a trademark application for Sugar-free can not be granted for soft drinks.
In general, the combination of descriptive signs is also regarded as being descriptive. So, trademark registration for Biomild cannot be granted for yoghurt. Here, there is one exception when a sign will acquire an certain degree of an extra dimension when it is composed by a combination of signs. For example in the Netherlands the application of Blikvanger (Can catcher) can be registered as a trademark due to the fact that it has a different meaning than ‘catching empty cans’.
3.5 Publication trademark application
During the procedure to obtain a trademark it will be officially registered in the trademark register after formal requirements, including payment of fees, have been taken care of. The trademark register is freely accessible to the public via websites of BOIP, EUIPO and database TMView,
Trademark holders of earlier trademarks who are of the opinion that a new trademark application conflicts their existing rights can start an opposition procedure. During such a procedure you can object against the new trademark application. An opposition against a Benelux trademark application must be started at the BOIP within a time frame of two months after publication of the trademark application. An opposition procedure against an EU community trademark must start at the EUIPO within three months after publication.
3.5.1 Opposition procedure
An opposition procedure is a procedure giving an earlier trademark holder the possibility to object against the registration of a new trademark which conflicts with their existing right. Often such procedures are based upon earlier registered trademarks indicating that the registration of a new trademark could lead to potential confusion amongst consumers.
When the opposition procedure succeeds the registration of the trademark will be refused. If the opposition procedure fails the new trademark will be registered.
3.5.2 Use of a trademark
It is important that a registered trademark is in use in the market place for those products or services for which it is registered. If a trademark holder fails to do so he will run the risk that he cannot invoke his trademark in an opposition procedure or that the trademark will be lost and cancelled in the trademark register.
The use of the trademark must be directed towards finding or maintaining real commercial sales of products or services for which the trademark has been registered. Symbolic use by itself does not suffice. The trademark does not need precise use according to its registration as minor variations also indicates its use (see Article 2.23bis part 5 BCIP). In this manner the trademark holder has the possibility to bring minor variations into the commercial use of its trademark.
3.5.3 Trademark registration of the Bugaboo trademark
In the trademark register several sources of information about the trademark can be found like the trademark holder, the type and sign of the trademark, validity and the products or services for which the trademark has been registered. In BUGABOO copy from trademark register you can see the registration of the word trademark BUGABOO for products in class 12 and 28 and for services in class 35.
3.5.4 Cancellation or nullity procedure
When a trademark has been registered in the trademark register it is still possible that a different party can claim its cancellation or nullity due to the fact that the trademark is not used, or that the trademark is too descriptive or infringes with an earlier granted trademark. In case of a Benelux trademark such a cancellation or nullity procedure can be conducted at the BOIP or the Court. Cancellation or nullity procedures of an EU community trademark have to be executed at the level of the EUIPO.
3.6 Trademark enforcement
The owner of the trademark, also named trademark holder has to monitor the market to observe if a company or person uses a sign or applies for a trademark that looks too much like their own trademark, hence infringing the rights of the trademark holder. If you find a sign or trademark that looks like your own trademark you will have to take action in order to nullify the other trademark. On the other hand it is also possible to leave the other trademark as is.
3.6.1 The rights of the trademark holder
The rights of the trademark holder can be found in Article 2.20 part 2 BCIP or Article 9 EUTMR. A trademark holder can act against other parties in the market place who without formal permission are using:
- A same trademark for similar products or services,
- A same trademark or a trademark that looks much alike for similar products or services, where there may be a risk that consumers will be confused
Looking into the case of Bugaboo the company can act based upon her trademark registration in class 12 (e.g. strollers) against the trademark of BUGAZOO for strollers, since consumers maybe confused by these two trademarks for products used by competing companies in the same market niche.
In addition, holders of well-known trademarks can take action against parties who ‘free ride’ on a well-known trademark without permission and without valid reason or when the distinctive character or reputation of the well-known trademark is harmed.
If the BUGAZOO sign would not used for strollers, but for clothing, for example, Bugaboo could possibly rely on the extra protection that exists for holders of well-known trademarks. In that case, Bugaboo would have to substantiate that BUGABOO is a well-known trademark and that its trademark is being used without valid reason.
3.6.2 Trademark limitations
In some situations trademark holders cannot act based upon their exclusive trademark right. Such limitations are mentioned and addressed in Article 2.23 BCIP or Article 14 EUTMR. A trademark holder cannot act against the sales of trademarked products if these have been delivered or sold by the company itself or with its permission in the EU (European Economic Area). At the moment of the sales the holder has received revenues and has used the trademark. This is referred to as exhaustion of the trademark, see Article 2.23 part 3 BCIP or Article 15 EUTMR.