The slogan ‘Just do it’, Lacoste’s crocodile, the yellow colour of Zwitsal and the shape of Toblerone chocolate: what do they have in common? You wouldn’t think so right away, but all these signs are protected trade marks.
A trade mark is a sign that an undertaking uses to distinguish its products or services from the products or services of other undertakings.
In addition, a trade mark also serves to guarantee the quality of products or services, to provide information about the products or services, to encourage potential customers to purchase the products or services, and to strengthen the reputation of the trade mark holder.
Many signs (such as words, names, drawings, letters, numbers, colours, shapes, sounds, etc.) can be registered as a trade mark.
For example, there are:
A trade mark gives the trade mark holder the right to:
A sign can only be protected as a trade mark if it is registered. If you only want trade mark protection in the Benelux, you have to file an application with the Benelux Office for Intellectual Property (BOIP: https://www.boip.int/en). However, if you want trade mark protection in all countries of the European Union, you have to file an application with the European Union Intellectual Property Office (EUIPO: https://euipo.europa.eu/ohimportal/en/home).
To acquire a trade mark, you have to pay a fee. A trade mark registration for the entire European Union is more expensive than a registration for the Benelux.
In order for a sign to be protected as a trade mark, it must meet 3 (negative) requirements:
In the Benelux and in the EU, a trade mark right is valid for 10 years from the filing date of the application. However, the trade mark protection can be extended indefinitely with periods of 10 years at a time. This does not happen automatically but via an application for renewal and a new payment.
The symbols ™ , ® and ©originate from the U.S. and have no legal value in the EU. It is therefore entirely unnecessary to mention these symbols with your trade mark in order to acquire or retain trade mark protection. Nevertheless, the ® symbol (which stands for ‘Registered’) can be a useful tool to make third parties aware that your sign is registered as a trade mark and that they cannot use it. The sign ™ and © in the U.S. stand for an unregistered trade mark and a work protected by copyright respectively and are therefore less relevant here.
Although undertakings often use the same sign as a trade mark and trading name, both are different. Moreover, the trading name of an undertaking is not necessarily the same as its company name.
Intellectual Property right?
To distinguish products and services
To distinguish one undertaking from other undertakings + advertising function
To identify an undertaking
Registration required for protection?
Yes (with BOIP or EUIPO)
No, protection through visible, public and continuous use of the name
Yes (with Crossroads Bank for Enterprises)
In the territory of registration (ex: Benelux or EU)
Limited to the territory where customers are located
Right to oppose any third party using the trade mark without prior authorisation
Right to compensation
Right to prohibit third parties from using identical or similar name in your territory in such a way that confusion is created
Right to compensation
Exclusive right on the name (so that others cannot choose it)
Right to compensation in case of a similar company name that creates confusion
Etablissementen Franz Colruyt
Law firm Timelex specializes in (international) intellectual property (IP), trademark law and copyright. We assist clients in drafting and negotiating different types of IP related contracts and we assist clients in their intellectual property disputes. Please contact us for more information.