How to protect your trademark in Belgium (and the Benelux)?

How can you protect your trademark from improper use, infringement or degeneration? Here are some practical tips and tricks to help you protect your trademark.

Effectively use your trademark in the course of your business.

Once your trademark is registered, it is important to effectively use it. A trademark that has not been genuinely used in the course of trade within 5 years of its registration may be revoked. It is thus important that you use your trademark as it has been filed (i.e., for the particular classification of goods and services as mentioned in the registration). If you change your logo, think about filing a new trademark to protect it.  A trademark can also be revoked for degeneration (i.e., due to the action or lack of action of the trademark owner, the trademark has become the normal commercial description of a good or service) or for misleading use (i.e., the trademark is likely to mislead the public). To ensure that your employees, customers and business partners use your trademarks correctly, it is highly advisable to educate them on the proper use of your marks (for instance, through the development of trademark usage guidelines, informing employees, customers and business partners to avoid generification of the mark, to use trademark symbols correctly, etc.).

Search the internet for improper use of your trademark

You should protect your trademark by taking action against improper use of your trademark. The most common form of infringement is the use of your trademark by another party. It is highly advisable to keep a close eye on the market and carry out internet searches on a regular basis to check whether somebody else is using your trademark (or a similar trademark that may confuse the relevant public) as a brand. Note that an owner of a trademark who tolerates the use of a later trademark during a period of 5 years may no longer invoke the nullity of the later trademark based on his or her prior right (except when the later trademark was filed in bad faith).

Send cease and desist letters

Quite often, a first step to solve such problem is to send a cease and desist letter (injunction letter) or a takedown notice to the other party, requesting the other party to stop the infringement and suggesting the other party to sign a settlement agreement. Sending an official letter can often be useful to inform third parties not to use your trademark in a way that dilutes its distinctiveness. For instance, you can inform third parties not to use your trademark as a verb, not to use it as a noun (always use it as an adjective modifying the noun), not to use it in a possessive form (unless the mark is possessive) or not to use it in the plural form (unless the mark is plural).

Start a court procedure to stop trademark infringement

If this does not help, you can start a court procedure against the infringing party. In Belgium, trademark infringement actions are brought before one of the five Courts of Commerce. This can result in different court actions. For instance, the court can ban further infringing uses of the trademark (injunction proceedings). The court can also include payment of damages (for the reparation of the prejudice incurred by the infringement) or of profits (in case of bad faith of the infringer). A confiscation of the infringing goods can also be ordered. Furthermore, the court may order the recall and destruction of the infringing goods and the publication of the judgment.  Finally, since trademark infringements are sanctioned under criminal law (if they are carried out with malicious or fraudulent intention), the trademark owner may also file a criminal complaint against the infringer.

If the trademark owner initiates an injunction proceeding before the chairman of the Court of Commerce (i.e., a so called "vordering tot staking" or "action en cessation"), he or she can obtain a court injunction ordering the cessation of all infringing acts, including penalties for non-compliance, in a relatively short time (usually 3 to 6 months). In case the trademark owner can demonstrate the urgency of the requested measures, he or she can even obtain the immediate cessation of the infringement as an urgent interim measure via summary proceedings before the chairman of the Court of Commerce (i.e., a so called "procedure in kort geding" or "procédure en référé"). The trademark owner can also initiate a specific seizure procedure to unilaterally request the appointment of a judicial expert to collect evidence with regard to the alleged trademark infringement, which usually includes a search of the premises of the infringer or other places where evidence is likely to be found and a seizure of the infringing products (i.e., a so called "beslag inzake namaak" or "saisie contrefaçon"). The surprise character of this procedure (the alleged infringer is not informed in advance of the seizure procedure) provides great opportunity for the trademark owner to prove the infringement, seize the infringing goods and calculate the damages incurred. Based on the report written by the expert, the trademark owner will have 1 month to file an infringement action on the merits.

Start an opposition procedure to object infringing trademark applications

When somebody else has taken steps to register a trademark that is identical or similar (and confusing) to your trademark, it is important to take the appropriate steps to object to this application as soon as possible. You can discover possible infringements by monitoring new registrations in the trademark register(s). This is often done by specialized agents or lawyers. If you find a conflicting trademark application, you can start an opposition procedure to prevent a pending application from becoming registered with the BOIP (similar opposition procedures exist for Community trademarks and International trademarks). Opposition procedures against new applications can be lodged until 2 months after the publication of the new application. In essence, opposition procedures are relatively efficient tools to prevent new trademark registrations and settle conflicts outside of courts. Once the 2-months opposition period has lapsed, the new trademark will be officially registered (provided that the assessment on absolute grounds does not produce any obstacles), and the only way to contest such new trademark will be to go to court.

Use TM and ® trademark symbols

In the Benelux, there is no legal obligation to use the TM and ® signs, but they can often help to make it clear to customers and competitors that your brand is trademarked. In fact, the symbol TM (for "trademark") indicates that a trademark has been applied for, but is not yet registered. Once the trademark is registered, the symbol ® (for "registered") is the proper sign to use. Even though the use of these symbols is not covered by law in the Benelux, you should make sure not to use these symbols in a misleading or confusing way (in other words, don't use them if your trademark is not registered or if you have not applied for a registration). 

Please contact me for any question, comment or suggestion you may have. If you need professional advice from a Belgian trademark lawyer or attorney, I will be happy to be of help.

For more information on Benelux trademarks, see my previous blog post.

For more information on how to chose a good trademark, see my separate blog post. 

Author: Bart Van Besien

Finnian & Columba

Belgium

bart@finnian.be

Attorney - Lawyer - Belgium - European Union (E.U.)

Specialised in intellectual property law (copyright, trademarks, patents, domain names, etc.) and media law.