FAQ - Trademarks
How long does it take to obtain a registered trademark in Belgium?
There is no Belgian trademark any longer. If you want to have your trademark protected in Belgium, you may either choose the Benelux Trademark (which covers Belgium, the Netherlands, and Luxembourg), or the Community Trademark (which automatically covers all countries of the European Union), or still the International Trademark registration designating Benelux or the EU. The time required to obtain trademark protection varies depending on the chosen route.
It takes from about 4 to 6 months to get your trademark registered in Benelux (unless your trademark is being subject of a refusal or an opposition). In case a fast registration of your trademark is required, you may ask to accelerate procedure, subject to payment of an additional fee. In that case, your trademark will be registered once your application has fulfilled all formal requirements. However, this accelerated procedure does not prevent your trademark from being cancelled after registration (following examination based on absolute grounds, or possible opposition).
To obtain a Community Trademark, it takes about 9 to 12 months unless your trademark is refused or opposed.
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How much does a trademark registration cost?
A Benelux Trademark: the costs for the filing of a Benelux Trademark amount to 630 EUR in 2009 (including 240 EUR as official fees). If you opt for a registration covering more than 3 classes of product or services, a supplementary fee amounting to 120 EUR per class will need to be paid. In case you choose to accelerate the proceedings, a surcharge of 270 EUR will be due.
A Community Trademark: the costs for the filing and registration of a Community Trademark amount to 1500 EUR in 2009 (including 750 EUR as official fees). For the fourth and each subsequent class of product or services, a fee amounting to 230 EUR is due. Since May 1st, 2009, the final registration fees have been cancelled.
This is of course an estimation of the expected costs for the registration of a trademark (including every action from our side of an administrative nature). The following expenses are not included in the above-mentioned amounts: our fees in case of official actions before the administrative offices or in case of opposition by third parties, etc.)
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Which documents and information are required for the filing of a trademark application?
For the filing of a trademark application, the following data and documents are required:
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I have a Benelux Trademark, am I protected against counterfeiting coming from abroad?
Exclusive rights conferred by a Benelux Trademark to its proprietor are limited to the Benelux territory (similarly the rights conferred by a US- or a Japanese trademark are respectively limited to the US and to Japan). That is the so-called principle of territoriality of intellectual property rights. Accordingly, the rights conferred by the Benelux Trademark do not allow you to prevent third parties living abroad from using your trademark for designating similar products and services in their country. However, you may forbid importation into the Belgian territory of identical or similar products holding your trademark and coming from abroad (albeit subject to the Community exhaustion of IP rights theory, please see Q28). If you want to benefit from similar rights in other countries than Benelux, you shall also get your trademark registered in such countries, via the national, the European or the international route.
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In which countries shall I get my trademark protected?
As the protection conferred by a registered trademark is territorially limited, we generally recommend that you seek for a protection in such countries which are (or will be) in the middle term of economic importance to you in your area of practice, that is to say in such countries where your current or future products or services are or will be marketed under your trademark within a period of from 3 to 5 years, be it directly or via a network of distributors or licensees. Indeed, in most countries a trademark which is not subject to normal usage during a period of 5 years (sometimes 3 years) is likely to be cancelled (revocation for absence of genuine use).
Kirkpatrick will be able to advise you on the protection strategy (national, European or international filing) which best fits your goals, your needs and your budget.
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What are the advantages of the registered trademark over the trade name?
A trademark shall not be confused with a trade name for a commercial name, which is the sign under which the business owner, a natural person or a legal person, operates his/her business. In other words, the trade name is the distinctive sign of the business (and not of the product or service). The purposes are thus different, even if de facto, the trade name is sometimes (but not always) identical to the trademark of the business owner.
Moreover, the means for obtaining the corresponding rights are different. The trade name is acquired by usage without registration whereas a trademark is obtained by registration before the competent authority. It is thus possible to “reserve” a trademark for a few years before you start using it in the targeted territories (three or five years maximum otherwise revocation is likely to occur, see supra), which is not possible for a trade name for which the right belongs ipso facto to the first user (in good faith).
Evidence of the right is thus easier to obtain in case of trademark since an official title does exist. On the other hand, proving a trade name will require establishing the effective usage, which may imply producing invoices, business cards, headed notepapers, extract from the Yellow Pages, etc. originating from the beginning of the activity, which is not always easy.
Furthermore, the territorial scope of protection is different. For the trade name, the protection does only exist in its area of influence, that is to say where it is recognized and known. The geographical scope of protection of a trademark will be the European Union or the Benelux, depending on the case.
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What is the life span of a registered trademark?
The term of a registered trademark shall be 10 years from the date of filing, but the latter may be indefinitely renewed for successive periods of 10 years, as long as the renewal fees have been paid in due time. However, the registered trademark shall be genuinely used. Lack of usage (without legitimate reasons) prolonged during five years (three years in certain countries) renders the trademark likely to be revoked (upon request by a third party but not automatically.
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For information, domain names are generally accorded according to the principle: “first arrived, first served”, without any kind of checking. This is in particular the case for the “.be”, “.com”, “.net”. As a consequence, the proprietor of the prior right e.g. the one who possesses a registered trademark will have to, if he wants to get the domain name wrongfully obtained by a third party cancelled or to get it back, go and see a posteriori a judge or an arbitrator.
In Belgium, different procedures exist when you want to get back a domain name which was wrongfully registered by a third party.
First of all, there is the “loi spécifique du 26 juin 2003” relating to the abusive registration of domain names which creates a specific action in cessation allowing to obtain promptly a substantive decision giving order to cancel the domain name or to transfer it back to the “natural” proprietor. Three conditions exist for the recognition of an abusive registration: (1) the registered domain name is identical or similar (up to create confusion) to a name on which the plaintiff has a prior right (a copyright, a trademark, a legal name, a patronymic name, a trade name, an indication of origin), (2) the proprietor of the domain name has no right or legitimate interest upon the name, and (3) the proprietor of the domain name acted with the intention to harm the plaintiff or to take undue profit of it (e.g. extort money from him).
Secondly, there is the procedure before the Cepani (Centre Belge d’Arbitrage et de Médiation, www.cepani.be) : this is a very fast arbitrage procedure (2-3 months) which takes place on line, without appearance in court from the parties. However, this procedure may only be used if the plaintiff demonstrates not only that the domain name is identical or similar (with risk of confusion) to a name on which he possesses a prior right (e.g. a trademark) and that the proprietor of the domain name has no right or legitimate interest upon this name, but also that the latter has registered and used the domain name in bad faith.
At last, the proprietor of a trademark may also try to act in counterfeiting of trademark, or to introduce an action in cessation or an action in responsibility.
The chances of success of the action will depend upon the circumstances.
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