When starting a business, there is one step that many entrepreneurs overlook: The registration of their trademark. A registered trademark protects you in a lawsuit, provides constructive notice of your property and, perhaps the most important, creates a brand which your customers respond to.
What is a trademark?
A trademark can be a word, logo or even a combination of both, which you use to distinguish your products and services from those of competing companies.
What function does a trademark fulfil?
Trademark obligation brings transparency to economic transactions and allows consumers to make better choices.
It enables companies to distinguish their products and services from those of competitors. By indicating a trademark, consumers and companies know exactly which company supplies certain products or services.
This soon creates a quality function of the trademark. Consumers often assume that products of the same trademark also meet the same quality standards.
A trademark also has an advertising function by drawing attention to the product with the trademark name and offering market participants the opportunity to mention the trademarked product.
Finally, a registered trademark can create an important value for your company. It is a sign of professionalism and can be helpful if you want to sell your company or trademark in the future.
The requirement of prior registration
Unlike certain intellectual property rights, trademark law does not arise automatically and should be distinguished from a “trade name” (see below). If you want to exercise rights on a trademark, prior registration is required. The trademark owner will therefore first have to submit a trademark application.
As soon as a trademark is registered, the trademark owner obtains a set of exclusive rights. One of these is that the trademark owner has a right of prohibition and can oppose to every use of an identical or similar sign by others. This is important to prevent others from confusing your (potential) customers.
Protection under trade name law vs. a trademark
In certain cases, non-registered trademarks may also benefit from some form of protection. However, this protection is limited and the exact scope thereof depends on the local law of the place of use of the trade name.
In any case, a trade name is only protected locally. This means that a trade name will only receive protection where it is more or less well-known.
Trademark law, on the other hand, grants exclusive rights within the territory for which the trademark has been registered. This can be worldwide, within the Benelux or throughout Europe. Through trademark registration, the trademark owner’s rights can reach much further. An immediate advantage thereof, is that you have a better view of the market and can develop a trademark strategy.
Secondly, a trade name can only offer protection to the name with which the company trades.
This means that the logo, the products and services with which you, as an entrepreneur, wish to distinguish yourself from others, do not fall under this protection.
As a company, you have invested a great deal of time, money and energy in a unique trademark/trade name and you obviously want to prevent competing companies from simply using it. It is therefore advisable to register your trademark through a trademark registration.
To conclude: 5 issues you should consider when registering a trademark
- Be sure to select a distinctive term for your trademark. The more unique, the easier it is to protect and enforce your rights in it. Terms that describe the product or service or that are already used in association with similar products or services, cannot be registered.
- Before you apply for registration, ask a trademark counsel to conduct appropriate searches in every jurisdiction of interest. Searches are the best tool for assessing risks associated with adoption, use and registration of a trademark.
- Remember that you can apply for registration even if you haven’t used a trademark yet. It is possible to file your application on the basis of an intention to use the trademark.
- It is important to think ahead. Are you planning on expanding internationally someday? Even if you do not have immediate plans to sell in a certain country, it is advisable to already file a registration in the places where you might be active in the future.
- Finally, you should know that a registered trademark doesn’t entitle you to a corresponding domain name. Domain names require a separate registration process according to the “first come, first served” principle. To avoid potentional disputes, we advise our clients to registrate a domain name at the same time with the trademark registration.