When a company starts selling, whether in store, off-site or even remotely (understand online), it always asks itself the question of whether it should take steps to protect its brand.
It sometimes happens that there is confusion in the minds of entrepreneurs between the trade name and the brand of a company, especially since some companies register their trade name as a brand. (For example Philips, Hilton or Fortis whose trade name is also the brand).
A second risk of confusion exists between the commercial name and the corporate name of a company.
In this article, it is a question of clearly delineating these different concepts and their legal implications and then listing the important criteria to examine before filing a trademark.
Brand, trade name, corporate name?
The function ofA brand is to distinguish the products or services of companies.
The filing of a mark gives the company a prohibition right exclusive throughout the territory for which it is registered, which is not the case for a trade name.
In addition, the company whose brand is counterfeited may choose between “an action for infringement” or “an action for cessation” (possibly accompanied by a penalty payment and other accessory measures) against its infringer without prejudice to claiming it also damages.
The company concerned may also request beforehand a counterfeit seizure in order to prove the existence and extent of the counterfeit.
Trade name is the name under which the company participates in business life.
The trade name should not be registered. It is enough for the company to make visible, public and continuous use of it.
In order to prove that your company has used its trade name in a visible, public and continuous way, the best way to prove it is to ask the Carrefour Banque des entreprises to register it.
Attention in the case of a commercial name, the ban is limited to the influence of the commercial name (spheres of activity and geographical area) which could be limited to a region depending on the locations of your business.
The corporate name or the corporate name of a company is the official name of the legal person which is included in the articles of association and is published in the Belgian Official Gazette and which is used only to identify it.
Whoever first acquires a company name has an exclusive right over this name for the whole of Belgium.
Benelux, European Union, world?
Today, deposit requests can generally be made online.
Registration with BOIP (Benelux Office for Intellectual Property) confers protection in Belgium, the Netherlands and Luxembourg.
Protection outside the Benelux is also possible. It is even recommended if your client markets or plans to market his products or services elsewhere in the world.
If your company seeks protection in one or more countries outside the Benelux, it can choose to make separate national deposits in these countries.
However filing in each country can be expensive and time-consuming and it is rather advisable to file a mark for the whole of the European Union. This type of deposit gives the company concerned simultaneous protection in all the States of the European Union. The filing of a mark for registration as an EU mark is made with the Office of the European Union for Intellectual Property (EUIPO), established in Alicante (Spain).
If you wish to register your mark internationally (outside the EU), you can register a mark, by means of a single deposit, in all of the States party to the Protocol to the Madrid Agreement. An international trademark is registered with the World Intellectual Property Organization (WIPO), established in Geneva (Switzerland).
Any international registration must be based on a basic deposit: it can be a national deposit (including a Benelux deposit since it is assimilated to it) or an EU trademark. This is the reason why the application for registration must be made through the office of origin.
Criteria to analyze before filing your brand?
Once you know in which geographic area you want your trademark to be registered, it is then necessary to analyze (or have analyzed) the following points before starting the filing procedure:
- The admissibility of the mark from a legal point of view with regard to the standards of the filing office concerned (For example: You have to ask yourself the question and analyze if your brand has a distinctive character with regard to the decision-making practice concerned );
- The classes and categories in which to register the mark. (In which classes of goods and services according to the Nice categorization should you register your brand according to the activities of your business?)
- Perform a prior search at European level in the trademark register to check whether there are similar or identical marks and determine the level of risk that a company will oppose your filing.
- Evaluate the possibility of requesting an accelerated procedure in order to reduce the length of the waiting period after the publication of the trademark application during which another company could oppose it.
- If necessary, adapt your filing project to reduce the level of risk that your brand will be refused or opposed.
Filing a mark requires further reflection. Before filing your trademark, it is strongly advised to request prior expertise from an experienced lawyer or jurist.
This will allow you to avoid losing the cost of the filing fee, to be granted protection which does not cover the whole of your field of activity or to be drawn into conflicts with companies which have filed a similar or identical brand.
Good news: If you hire a consultant (lawyer) to register your brand, you can ask for a subsidy equivalent to 50 percent of the consultant's intervention costs. (In Brussels and if these costs are more than 500 euros).
If you have any questions relating to this subject, do not hesitate to contact me via the “contact me” section of the blog. or write an email.