Trademark law: when is there a trademark?

Brands are everywhere, and some brands are even worth billions. Think of brand names like Apple, Nike and Heineken. But trademarks can also be signs, logos, slogans, shapes, smells and sounds. So trademark law actually offers protection to features (signs) that distinguish certain products or services of a company from others. Are you familiar with the term ‘registered trademark? That term exists for a reason. Below, Lexys’ trademark lawyer explains exactly what a trademark is and how you can protect it.

Brand must be distinctive, otherwise it is not a brand

However, a trademark must be distinctive to enjoy protection. As in the trade name law, there is no protection for anything descriptive in nature. That means that the trademark cannot be descriptive of the products or services being offered. For example, you cannot register the trademark name “Apple Juice” if your company sells apple juice.

Trademark law protects only registered trademarks

A trademark right can arise only by registering the mark with the Benelux Office for Intellectual Property. (BOIP). This creates a trademark that is protected in the Benelux. There are also trademark offices where trademarks can be registered for other regions, e.g. the EUIPO where a European right can be registered. For protection by trademark law, the mere use of the trademark is not sufficient.

Protection of BOIP registered trademark

After registration with the BOIP, the trademark is protected for 10 years. This protection can then be renewed again and again for 10 years. A registered trademark gives the exclusive right to use a trademark within the specified class(es). You can therefore take action against someone who uses an (almost) identical trademark within the specified class(es). You can then challenge the infringement. You can also transfer or license your trademark rights.

The difference between trademark law and trade name law

As already highlighted, trademark law differs from trade name law in certain respects, except for the similarity regarding the descriptiveness of a trademark or trade name. A trademark provides an exclusive right to use a sign for specific products and services. The right arises from registration of the trademark. Trade name law protects the name under which a business is actually conducted. This right arises through use, not registration.

Lawyer for trade name infringement of a trademark

If someone already has a trade name and this name is then registered as a trademark by another person, the person with the older trade name can challenge the trademark registration. On the other hand, a person, who has already registered a trademark name and then sees another person using the same name as a trade name, can sue the one who is infringing on her trademark right.

Are you looking to protect your trademark or address a potential infringement? Then feel free to contact with us!