Beware of misleading advertisements regarding trademark registrations: scammers at work?

The email reads as follows:

“Dear Sir/Madam,
Yesterday we received an application for the trademark registration of […]. This was not requested by you or your company, but by a third party. We see this in the application forms.
During our screening, we saw that you have a similar company name, but in a different sector.
Since your company is registered with the business registry, you have the first option for registration for this trademark.
If you prefer that this third party does not use this trademark, you can inform us. In this case, you can register the trademark yourself.
If you wish to register the trademark in Belgium (and automatically in the Benelux), the costs are 599,- excluding VAT. Your registration will be processed within 24 hours. You can find an overview of the rates for a European or international registration on our website.
Please let me know within three working days if you wish to take advantage of this offer. If you do not respond or are not interested, we will approve the application of the third party. This means that they will obtain the trademark rights over […].”

The company tries to convince you to use its services for a trademark registration in a rather aggressive form of advertising. According to our analysis, it seems to be a company of dubious nature. On the company’s website, there are no identification or contact details, and the company is not registered in the business registry. It is therefore recommended not to respond to this request.

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

What is a trademark?

Trademarks are signs used in commerce to indicate the origin of products and services. The consumer who sees the trademark will immediately be able to link it to a particular company. A trademark is primarily used to identify the products and services of a company. There are different types of signs that can be registered as trademarks: words, logos, three-dimensional signs, slogans, patterns, colors, movements, sounds. Here are some (recognizable) examples registered as trademarks:

• “Iphone” is registered as a word mark for, among others, class 9 (“computer hardware and software to provide integrated telephone communication with computer-controlled global information networks”);
• The three stripes of Adidas are registered as a figurative mark;
• The specific logo of an apple on an Iphone is protected as a figurative mark;
• The orange color of the label on the champagne bottle of Veuve Cliquot is registered as a color mark for champagne;
• The pattern of LV is registered as a pattern mark for, among others, handbags, goods made of leather;
• 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 its recognition among the public. It is important that a consumer immediately recognizes your company when seeing a name or logo. Trademark registration contributes to the uninterrupted use of a trademark and to a higher financial value of the company. Additionally, it ensures that others cannot use the same logo or word mark for the same/similar products and services. It protects you against those who want to introduce an identical or similar trademark on the market or benefit from the success of your trademark.

How does trademark registration work?

A trademark can be registered for certain geographical regions where your company is active. You can choose trademark protection within the European Union, called a union mark, or protection within Belgium, the Netherlands, and Luxembourg, called a Benelux mark, or in various countries around the world. In any case, a trademark registration is valid for 10 years and is always renewable.
For the choice of a Benelux mark, the application for trademark registration will be made at the BOIP, “Benelux Office for Intellectual Property”. For the choice of a union mark, you can enjoy trademark protection in all EU member states with a single application at the EUIPO, “European Union Intellectual Property Office”.

Trademark protection within certain classes

When applying for a trademark, you will need to indicate for which products or services you will use the trademark and therefore for which “classes” you want a registration. There are 45 different classes according to the international classification system of Nice. Each class designates certain products and services.

Different steps before and after trademark registration

Before you want to register a name, logo, slogan, etc. as a trademark, it is important to first conduct thorough research on the availability, feasibility, and risks of the trademark. You will need to check if the sign is not already used by another company and/or if the sign you have chosen is not too descriptive.

With a positive advice, it is time to submit a trademark application to a trademark office such as the BOIP for a Benelux mark or the EUIPO for a union mark.
Once the trademark is registered, it is obviously important to ensure that others do not deposit an identical/similar name or logo. This is important to not affect the value and recognition of the trademark. If you encounter this and there is therefore an infringement of your trademark, it is advisable to take timely action.

Our PKF BOFIDI Legal experts are happy to help you

PKF BOFIDI Legal is happy to assist you in the various steps of trademark registration and helps you monitor your trademark. Contact our experts.