Brand owner protect your brand!

You have registered a trademark in the trademark register and over time an identical trademark is registered by a competitor. What are your options as proprietor of an "older" trademark to act against the "younger" trademark?

Acquisition of trademark right

Trademark law in the Netherlands is regulated by the Benelux Treaty on Intellectual Property (BTIP). According to this treaty, the trademark is a sign that can be expressed in various manifestations, such as word, image or sound. To obtain trademark rights in the Benelux, an application must first be filed with the Benelux Office for Intellectual Property (BOIP). After this application, the BBIE checks, among other things, whether the trademark has sufficient distinctive character. In practice, the office is strict in its assessment; for example, the smell of perfume or the sound of opening a can of beer are, in principle, not protectable. However, the BOIP does not extensively check for similarity of trademark registration. That is the responsibility of the trademark applicant. Once approval is obtained, the trademark can be registered. From that moment on, an exclusive right belongs to the person who registered the mark.

Now that the exclusive right belongs to you, the issue is to protect the brand from the younger brand.

Opposition

First of all, it is important to find out from which moment the younger mark was registered. If this is within the period of two months counted from the publication of the registration of the earlier mark, it is possible to file an opposition . This is a special procedure that is conducted at the BOIP instead of in court. The advantage of this procedure is that the conflict can be resolved without the intervention of a judge and is also cheaper. During the procedure, trademark owners are given the opportunity, during the so-called "cooling off period," to settle the dispute among themselves. If this fails, the BOIP will issue a decision as soon as possible. Do you disagree with the decision? Then it is possible to appeal to the Benelux Court of Justice.

Unfortunately, you only discover the younger mark after the two-month period. It is no longer possible to file an opposition with the BOIP. Still, you want the younger mark to disappear from the register, otherwise your competitor can continue to advertise his product or service with the identical mark. To your detriment. In that case, the possibility remains to invoke the nullity (the mark has never validly existed) or lapse (the mark ceases to exist) of the younger mark.

Nullity and decay

Among other things, a trademark is invalid if it is not sufficiently distinctive, for example, because it is derived from another trademark, as in your case. The assessment of distinctiveness is made on the basis of the overall impression the mark leaves on the public. Here it is important that the marks have more differences than similarities.

In addition, a trademark is invalid if the trademark contains arms, flags or other state emblems of Union countries. To illustrate this, I refer to the judgment of the Court of The Hague of July 22, 2014. In this judgment, the Court declared several trademark registrations of "Swiss Sense" invalid because they contained the Swiss state emblem (see Figure 1). Consequence, the trademarks in question were removed from the trademark register.

Lapse of a trademark can be invoked in part because of non-normal use, or "non-usus," of it. If a trademark is used non-normally for a continuous period of five years without a valid reason, it is eligible for revocation.

The court tests the genuine use of a trademark by determining whether it is being used for the purpose of finding or keeping an outlet for the goods in question, to the exclusion of token use for the sole purpose of preserving the rights attached to the trademark. In so doing, account must be taken of all the facts and circumstances which make it possible to establish that commercial exploitation is real: in particular, the extent, frequency and regularity of use of the mark, having regard also to the nature of the product and of the market in question. A test in which many factors are considered. For example, use of the trademark in promotional items (e.g., soft drinks) that are given away for free may not constitute use of the trademark. However, once the public perceives the mark on those promotional items as being in distinction from the products being advertised, it may well qualify as genuine use.

Closure and tip

In this blog, I discussed the options for taking action against the registration of a junior trademark. As a tip, I suggest subscribing to a trademark monitoring system such as that of the BBIE, namely BOIP Trademark Alert. This will automatically alert you if someone applies for a trademark similar to yours. This is convenient because you can then act in a timely manner and take advantage of the Office's quick and inexpensive opposition procedure.

Want to know more or need advice on trademark law? We would be happy to help you further. Using the form below, please contact Jan Willem van Aken for more information.

This page was last updated on August 14, 2023.