When devising a new trademark, people usually quickly google whether the trademark is already in use, whether the domain name is still available and whether the trademark is already listed in the trademark register. Whilst these are sensible first steps in determining whether a trademark is available, checking the register for an identical mark is not sufficient: trademarks that are not identical, but that are similar, can also give rise to legal opposition.
Moreover – contrary to popular opinion – the Benelux and EU trademark authorities do not check for themselves whether identical or similar trademarks are already listed in the register when a new trademark application is filed. Consequently, it’s quite possible that a party may file an opposition to the trademark after the application has been accepted by the trademark authorities. Opposition may also emerge when the trademark is already on the market. In short, bothersome (and possibly costly) situations can arise.
To prevent this from happening, it’s wise to carry out prior research into trademarks that may be opposed. Research should include not only trademarks that are identical but also those that are confusingly similar.
A trademark must be registered in the name of an individual or a legal entity. A sole trader is not a legal entity and therefore cannot serve as a trademark proprietor. The same goes for a private limited company in formation. Legal entities must register trademarks in their name under the Articles of Association rather than their trade name (unless of course their name under the Articles of Association and their trade name are the same). The authorities do not check this themselves: the trademark applicant is responsible for using the correct data.
Although the authorities in the Benelux and the EU do not check whether the register contains trademark registrations that may be opposed, they do check whether a trademark that has been newly applied for can serve as a trademark at all. Marks that are descriptive or have no distinctive character, for example, cannot be registered as trademarks and will be refused by the authorities. To illustrate, the trademark APPLE would not be accepted for apples. The APPLE trademark for computers and smartphones, on the other hand, is not descriptive, which makes it suitable for registration as a trademark.
Trademarks that are perhaps not directly descriptive may also be refused. Examples here would include general terms (of commendation or otherwise) such as MEGA, SUPER or ULTRA.
It’s fairly common for companies to register a logo only. Just to clarify: registering a logo is a wise idea, but with a new trademark it is better to start off by registering a word as a word mark, as this provides the broadest protection for the word itself. In addition, a logo sometimes gets modified or enhanced over the years. As it is not possible to change an existing trademark registration, this means that a new trademark application has to be filed. However, because the brand name for most trademarks remains the same, word mark protection tends to remain effective for longer than logo registration.
When applying for a trademark, the applicant is expected to give an indication of the products or services for which the trademark is registered. Given that this description determines the scope of the trademark protection, it’s important to consider it carefully. If a definition is too broad or unclear, third parties may not fully understand which products or services the trade mark will be used for, prompting them – possibly unnecessarily – to file an opposition to a trade mark application. An incomplete description, on the other hand, can also cause problems, as it is not possible to add goods or services to an existing registration. For this reason, a description should not only be based on the products or services that will be offered under the trademark right away, but should also take account of developments in the near future: it may be wise to include future products or services in the description at the outset.
Please remember that in most countries trademarks are subject to an obligation of use. This means that (in due course) trademarks have to be used for the products or services for which they were registered. Consequently, registering a trademark for products or services for which it will never be used serves little purpose.