Protecting your brand

If you want to protect your trademark against use by others, it’s highly advisable to obtain a trademark registration at the office for intellectual property of the country in which you want to protect it. Once you have obtained the registration, you, as the owner of that trademark, have the exclusive right to use that trademark in that country. There are some restrictions to this right. Most importantly, the protection is limited to identical and similar goods or services as included in your registration. It is therefore very important to think about the goods and services you offer and maybe plan to offer in the near future before you submit an application. You cannot change the goods or services once you have applied, and the scope of protection is an important factor taken into account when it comes to potential infringing trademarks of third parties. Something else to thoroughly think about, is the name you choose. If there are identical or similar names registered as trademarks, that can bar a successful application. The local marketing organisation of the Dutch Heerenveen region, ‘Heerenveen ‘n Gouden Plak’, approached me to advise them about the possibilities and limitations of obtaining a trademark registration for their brand, both the name and logo. Alvin Sibbald, former manager, shares his experience:

“Since this is a relatively complex area of law, involving advisors trying to take advantage of that fact, we wanted to hire a reliable professional legal advisor to advise us about the legalities surrounding a trademark registration. VBLA came recommended by a contact in my network. After VBLA provided us with a reasonable quote, Arjen has first informed and advised us about the possibilities of applying for a trademark for our organisation’s name and logo. After we decided, on the basis of his advice, to proceed to the next stage, Arjen has guided us through the application process. The logo was accepted as a trademark, but the word mark was rejected because it supposedly was not distinctive. Arjen has advised us to file an objection against this decision of the Benelux intellectual property office. And so we did, with Arjen taken the lead in drafting the objection and finding the right arguments and accompanying evidence required. He also acted as our representative. This resulted in a positive outcome: our objection was honoured and our word mark was registered eventually.”