Beware of misleading advertising concerning trademark registration – scammers at work?

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In recent weeks we have heard from several clients that they have received an email from a company posing as a business specialised in intellectual property with a particular focus on trademarks. The email reads as follows:

“Dear sir/madam,

Yesterday we received an application for the registration of the trademark […]. The application came not from you or your company but from a third party. We can see this on the application forms.

During our screening we noticed that you have a similar company name, but in a different sector.

However, since your company was registered with the business counter earlier, you have the first option to register this name as a trademark.

If you prefer them not to use this name as a trademark, you can notify us of it. In this case, you can register the trademark yourself.

If you wish to register the trademark in Belgium (and automatically in the Benelux) the cost for this will be € 599 excl. VAT. Your registration will be processed within 24 hours. You will find an overview of the fees for European or international registration on our website.

I would like to know within three working days whether you wish to take up this offer. If you do not reply or are not interested, we will approve the other party’s application. This means that they will obtain the trademark rights to […].”

The company is trying to convince you to use its services for the registration of your trademark in a rather aggressive form of advertising. Our analysis is that this company appears dubious. No identification or contact details can be found on the company website, nor is it registered with the Crossroads Bank for Enterprises. It is advisable therefore not to have anything to do with it.

Now that you are aware of these practices, we will explain briefly in this article what is meant by a trademark and how BOFIDI Legal can support you in this respect.

What is a trademark?

Trademarks are legally protected signs used in commerce to indicate the origin of products and services. When consumers see a trademark they will immediately be able to make the link with a particular company or brand. A trademark therefore serves primarily to identify the products and services of a company. There are various types of signs that can be registered as trademarks: words, logos, three-dimensional signs, slogans, patterns, colours, movement and sounds. The following (recognisable) examples are registered as trademarks:

  • “iPhone” is registered as a word mark for, among other things, class 9 (“computer hardware and software for providing integrated telephone communication with computer-based global information networks”);
  • Adidas’ three stripes are registered as a logo; likewise, the specific logo of an apple on an iPhone is also protected as a logo;
  • The orange colour of the label on Veuve Cliquot champagne bottles is registered as a colour mark for champagne;
  • Louis Vuitton’s LV pattern is registered as a pattern mark for, amongst other things, handbags and leather goods;
  • The tune of Für Elise is registered as a sound mark.

Why is trademark registration important?

As an entrepreneur you invest a lot of time, energy and money in building your business and making it known to the public. So, it is important that consumers recognise your company immediately when they see the name or logo. Trademark registration contributes to the untroubled use of a trademark and the higher financial value of the company. In addition, it ensures that others cannot use the same logo or word mark for the same or a similar product or services. It protects you from others who want to put the same or a similar brand on the market or take advantage of the success of your brand.

How do you register a trademark?

A trademark can be registered in particular geographic regions where your company is active. For example, you can opt for trademark protection within the European Union, called a union trademark, or for protection within Belgium, the Netherlands and Luxembourg, called a Benelux trademark, or in different countries around the world. In each case, a trademark registration is valid for 10 years and is always renewable.

If you opt for a Benelux trademark you must apply for registration to the Benelux Office for Intellectual Property (BOIP). If you opt for a union trademark, you can enjoy trademark protection in all the member states of the European Union with just one application to the European Union Intellectual Property Office (EUIPO).

Trademark protection within specific classes

When filing a trademark application, as a company, you will have to indicate the products or services for which you are going to use the trademark and for which “classes” you want registration. There are 45 different classes according to the Nice International Classification System. Each class designates particular products and services.

Various steps before and after a trademark registration

Before you decide to register a name, logo, slogan, etc. as a trademark, it is important to first conduct a thorough investigation into the availability, feasibility and risks of the trademark. You will have to check whether the sign is not already being used by another company and/or that the sign you have chosen is not too descriptive.

When you have successfully carried out these checks, it is time to file a trademark application with a trademark office such as BOIP, for a Benelux trademark, or EUIPO, for a union trademark.

Obviously, once the trademark is registered, it is important to make sure that others do not file an identical/similar name or logo, as that could affect the value and the reputation of the brand or company associated with your trademark. If you do come across this, i.e. that there is infringement of your trademark, it is advisable to take action swiftly.

Our Bofidi experts will be pleased to help you

Bofidi Legal will be pleased to assist you with the various steps involved in trademark registration and to help you monitor your trademark afterwards.