How do you protect a brand? I ask Bart Van Besien, lawyer at Sirius Legal.
17-04-2017 - by Kevin Van der Straeten
Hi Bart. Welcome to our studio.
We’re going to talk about brands and how to protect them. But maybe to start with: what is a brand?
A brand, or a trademark as we call it in legislation, so to speak.
Okay, I’m sorry.
No, no, no. It’s more or less the same thing. But in legal terms we always call it a trademark.
Okay, I’m learning.
Yes, here you are. What is a trademark or what is a brand? It’s a sign, it can be a name or a logo, for instance, that you attach to your products or your services that you are selling. Which is important because if you start up your business, you might want protection for the services or the products that you are selling to avoid that a third party, somebody else would claim the same name, would use the same name, or would start a procedure against you.
But a trademark is not necessarily the same as your company name, then?
That is correct, actually. So you can have a company name, which is totally distinct from your trademark.
So it’s the name that you use to go into the market.
Okay, and how do you protect that? How do you protect that?
Well, you can apply for a trademark. Like, for instance in Europe we have the European Union trademarks. Which are valid in 28 different European countries. In the Benelux for instance, we have a trademark registration process for Belgium, the Netherlands, and Luxembourg. In different countries you have different types of trademarks. Sometimes national trademarks. For instance in the United States or in Japan, you have national trademark registrations. But what you have to do there, the main principles are always more or less the same. You start an application and once you have gone through the whole procedure your trademark will be registered and you will be the official trademark owner.
Okay, then you have the protection so nobody else can use that name.
Well, yes, nobody else can use the name, but it can… It always depends a bit. Because when you apply for a trademark, you always have to choose the different classes of goods or services that you want your trademark to apply to. So it can be that different companies use the same trademark, but for different types of services.
Okay, so Apple, for example, sells computers, but if I want to use Apple to sell cars, I should be able to register that.
Well, I would have to check it, but that could be possible. For instance, the trademark Lotus is a registered trademark for cars, but also for cookies in Belgium. So it’s possible that you use the same name for totally distinct types of services or goods that you are offering.
And what is the procedure to follow, if you wanted to apply for a trademark?
Well, I think the best thing that you can do is first do your homework and check whether the name is still available. Check whether somebody else is using the name…
That makes sense.
Because that’s the first step that you have to do. And these registers, they are public. So you can just go to them and check it. Then you have to apply for your trademark. I think one main element there is when you choose a trademark, that you check that the trademark is distinctive enough. So that it does not just describe your goods or services that you are offering, but that it’s really distinctive.
That’s not allowed?
That is not allowed, yes, exactly. So that will… Yeah, the trademark office will not allow that. And also, third parties might file an opposition against it. The official registration, actually, it is quite simple once you have checked whether the name is available. You file the application with all your details and they will check whether the trademark is allowed or not. There will be a time period, typically two or three months, during which third parties have the opportunity to file an opposition. So that can happen. If that does not happen, in most of the cases, after three or four months after the application date, you should have your trademark.
It seems to me that it’s not a really easy subject. So I can imagine that calling the help from an expert like you is advisable in such a situation.
Well, I think so, actually. I think that if you use a trademark authority, a lawyer, beforehand, you can avoid a lot of problems. You can avoid a lot of problems with oppositions and with trademarks being refused. And if you ask somebody who has knowledge of this subject to help you beforehand in most of the cases it’s a decent thing to do. Sometimes if it is really simple…
Yeah, you can do it yourself.
You can do it yourself. But in many cases it’s worth a small investment to go to a trademark authority.
Okay Bart, thank you very much for coming over.
You’re most welcome.
And you at home, thank you for watching our show. I hope to see you next week.