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Your Business First

OCTROOIEN | MODELLEN

Top 3 pitfalls of DIY trademark registration

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You can quite easily register a trademark at the Benelux Office for Intellectual Property (BOIP) yourself. All you need to do is file an application online. If you have any questions you can look up the answers in the explanatory notes provided by the BOIP. That information is clear. So what could possibly go wrong? Lots of things! In fact, just about everything. In this blog we discuss the Top 3 pitfalls of do-it-yourself trademark registration.

1. You register an existing trademark

From time to time entrepreneurs will register a trademark that already exists. What a lot of people do not know is that the BOIP will register a trademark as long as the application fulfils the formal requirements. This does not include an investigation into older rights or existing trademarks. This can lead to serious setbacks. You may think your trademark is protected while, in fact, somebody else already has a right to it. It is possible then for you to end up in a situation, where, even years after your registration, you are confronted with an insurmountable objection against your trademark registration, as a result of which you will no longer be allowed to use it . Worse still, you will then have to take all infringing products from the market. So your trademark registration will have been a waste of money as will the marketing based on the trademark.

2. You make the wrong choices

We often notice that an entrepreneur makes the wrong choices when filing the application. That is hardly surprising, as there are many possible considerations to take into account when it comes to protecting a trademark. For clarity's sake: a trademark may consist of a name, a figurative mark (logo) or a combination of the two. However a trademark may also consist of the shape or the colour of a product. You can register all of this. But do you really want to? Good protection depends on what you want to do with the trademark both now and in the future. In many cases the protection of one or two variants will suffice.

A trademark always relates to specific products or services. When filing a trademark application you have to indicate for which products or services you want to register your trademark. If the description of your product or service is too limited or too general, you run the risk of losing it in a conflict. It is all about getting the description right. This is where things tend to go wrong.

3. Your trademark is not distinctive enough

Your trademark has to be distinctive. If a name is not distinctive it is not a trademark. It is not possible for a baker to register 'Baker' or 'Bread' as a trademark, for example. The name may not be a description of the product or a feature of the product. A trademark office will refuse such a registration. It is a waste of time, energy and money.

Trademarks are also registered under the wrong (company) name. Applicants occasionally use the company's trade name instead of the registered name, for example. This will render the trademark invalid even though it has been registered. The applicant may then think that the trademark is protected, while it is in fact worthless.

A trademark can become worth a lot of money

A trademark can become very successful and represent a great deal of money as a result. Suddenly finding out that the trademark is not protected - and therefore worthless - can lead to sizable losses. It is important therefore that the registration takes place with care, especially because there are often unexpected legal and practical issues involved as well. The advice of a trademark specialist is worth its weight in gold.

A careful initial trademark registration is furthermore important because it forms the essential basis for expansion of the trademark protection abroad. Trademark registrations can be renewed time and time again, for a period of ten years at a time. As soon as a trademark application has been filed, the essential elements, such as the product or service description and the trademark can no longer be changed.

It is possible, of course, to re-register a trademark at a later stage. However, the costs of your initial registration effort will not be refunded. More importantly, the first protection date will also be lost. It is obvious that you will want to legally protect your trademark, including the goodwill to be created, as effectively as possible right from the very start. Trademark registration? Do not be penny-wise and pound foolish!

Onderwerpen: Top 3, Trademarks, Design Rights