Building a strong brand is essential to the success of a business, especially if it is already strong enough to expand beyond one country. If your immediate plans are to register a TM in the Netherlands or another Benelux country for your business, then our short practical guide will be helpful to you. It is especially worth paying attention to the points related to the refusal to register a trademark. Such cases are rare, but they do happen. How not to get trapped? Read below.
So, you have gathered all the necessary documents for registering a trademark in the Netherlands and filed them properly with the Benelux Regulatory Authority – BOIP. Refusal to register can be a big and unpleasant surprise. On what grounds can you be refused?
BOIP may refuse to register a TM in the Netherlands if:
- The mark is fuzzy and too descriptive, that is, it lacks strong distinctive features;
- There is a risk that the TM can mislead consumers;
- The brand in any way does not fit into generally accepted ethical standards;
- The brand represents the flag of a state or a recognizable organization;
- TM has a form that overlaps with any other IP right, such as a patent or design right.
So, for example, TM cannot use designations that depict or imitate state emblems, and other state symbols, official names of states, emblems, abbreviated or full names of international intergovernmental organizations, industrial designs, the rights to which belong to other persons in the Netherlands. Therefore, when developing the type of trademark, learn in detail the requirements for their image.
Typically, the regulator issues a provisional refusal after filing an application for registration of a TM in the Netherlands. However, as an applicant, you have every right to appeal such a decision. You have a legal three months for this and during this period it is advisable to seek qualified legal assistance in order to correctly parry the blow. For example, the specialists of our company have come across this kind of cases more than once and can provide the necessary assistance.
The likelihood that you will be refused a trademark registration in the Netherlands is very small, due to the likelihood of confusion with earlier registrations. Therefore, it is the concern of TM owners with earlier registrations to monitor applications. In case of filing an application for a similar TM, they must immediately initiate an objection procedure. Then the owners of later TM will not have a single chance to register TM in the Netherlands, or their mark will be subject to cancellation and removal from the register.
Resolve a TM dispute in the Netherlands
Trademark litigation in the Benelux countries begins with the so-called "cool" period, which can last up to 2 months. This is a reasonable step on the part of the regulator, which is aimed at a little "cool down" the ardor of the disputing parties and try to resolve the commercial dispute on TM in the Benelux countries without judicial intervention.
Once the applicant decides to start litigation in the Netherlands, the opponent will have a two-month time limit to present the grounds for opposition. The applicant then also has sufficient time to respond with their comments.
Contacting our professional team will be a good decision if you are going to register a TM in the Benelux in the near future. Our company seasoned professionals will help you understand the legal requirements of your chosen jurisdiction which will help you avoid unnecessary time losses. We will also provide comprehensive legal assistance in resolving TM disputes in the EU should you encounter such a situation.
Also, our specialists will advise in resolving a TM dispute through mediation in the Netherlands and any other European country. Use our friendly service to successfully expand your business in Europe!