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.
2
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.
3
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.’
4
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.
5
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.
6
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!’
8
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.
9
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.
10
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.
11
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.
12
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.
13
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.
14
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).
15