18 February 2015

An introduction to trademarks and trademark protection in The Netherlands

Category: Privacy law

Unlike most jurisdictions in the European Community, the Netherlands, alongside Belgium and Luxembourg, have no system of national trademarks. Instead, the applicant of a trademark can apply for protection of his trademark under the Benelux area (a union of states comprising the Netherlands, Belgium and Luxembourg). Once registered, a Benelux trademark grants the trademark owner protection of his trademark across the entire Benelux area.

Registration of a Trademark

A Benelux trademark requires a mandatory *registration*. The Benelux Office for Intellectual Property (‘BOIP’) is exclusively appointed to handle all Benelux trademark applications. The application for a trademark is best done by a specialized [(trademark) attorney](http://www.blenheim.nl/lawyers/jan-jacobi-dutch-attorney). As the trademark application demands certain requirements, guidance on how and if your trademark can be registered is highly advisable.
For the purposes of an example, we will use the fictional trademark ‘Weeping Willow’, intended to be used for herbal tea. The applicant of this trademark will need to determine, during the application process, in what *form* he wishes to register his trademark and for which category of *goods and services* he requires trademark protection.
The most common trademark applications are those of a *wordmark* (consisting of a verbal element such as ‘Weeping Willow’, or a slogan), a figurative mark (consisting of a graphical element, such as the depiction of a Weeping Willow tree) or a combined word-/figurative mark (consisting of both a graphical and verbal element, such as the depiction of a Weeping Willow tree with the words ‘Weeping Willow’). Each type of trademark has its own benefits and disadvantages.
The applicant of a trademark appoints goods and services under an international standard classification (the ‘Nice Classification’) for which he requires trademark protection. In a regular Benelux trademark application, the applicant may appoint three classifications (in the case of Weeping Willow, non-alcoholic beverages, services for providing food and drink and advertisement). Within the classification, the applicant can describe the goods and services he wishes to appoint under the trademark. Both a limited and extensive description may hinder the effective protection of a trademark. The applicant should therefore elect the classification and the thereto related description very carefully.
Upon completion of the application and payment of the application fee, the BOIP will process and examine the trademark application.

Examination of BOIP; refusal on absolute grounds

Not all trademark applications can be registered as a trademark. The BOIP examines whether the applied for trademark meets certain requirements under the Benelux Convention on Intellectual Property. The BOIP reserves the right to refuse an application on ‘absolute grounds’. Amongst these absolute grounds are the circumstances that the application does not meet the specific requirements of what a trademark may be, or that the application is contrary to public morality. The decision of refusal of an application on absolute grounds is subject to an appeal of the trademark owner.

Opposition proceedings

The BOIP does not examine the relative grounds for refusal (the rights of other trademark owners). Consequently, the trademark owner of an (older) trademark may formally oppose to the registration under certain circumstances. The proceedings that follow such opposition are called opposition proceedings. The result of a successful opposition is that the trademark application will be (partially) refused. The opposition proceedings in first instance of Benelux trademarks are exclusively being handled by the BOIP. Since trademark applicants risk oppositions proceedings, which proceedings are of a specialized nature, council of a trademark attorney is highly advisable.
If you would like to know more on Benelux trademarks and their registration, please contact: