Trademark law

Brands are ubiquitous in our daily lives. They not only help consumers identify the origin of products and services, but also contribute to the reputation and image of companies. Trademark law plays a crucial role in this regard by acting as a intellectual property rights provide legal protection to these distinctive marks. This right allows companies to protect their investments in quality and marketing from infringement and counterfeiting.

Below we will explore the various facets of trademark law in Belgium.

1. Legislation

Below we discuss the main national, Benelux, European and international sources of trademark law legislation. Together, these legal frameworks form the foundation for trademark protection in Belgium and abroad.

1. Belgian and Benelux texts.

a. Civil law: BVIE

Within the Benelux (Belgium, the Netherlands and Luxembourg) trademark law is harmonized. The Benelux Convention on Intellectual Property (BCIP) forms the basis for trademark law in the Benelux and regulates the registration, protection and enforcement of Benelux trademarks within these three countries.

The treaty is implemented by the Benelux Organization for Intellectual Property (BOIP)., which is responsible for registering trademarks and designs in the Benelux.

b. Criminal: Belgian Code of Economic Law.

Although trademark law itself is harmonized at the Benelux level, the criminal provisions differ from one Benelux country to another. This criminal protection is primarily aimed at combating trademark counterfeiting and fraud, which is important for maintaining fair competition and protecting consumers. In Belgium, the Book XV of Code of Economic Law criminal penalties that can range from fines to imprisonment, depending on the severity of the offense.

2. EU texts

a. Trademark Directive 2015/2436

The Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks aims to harmonize the laws of EU member states on trademark law.

It was transposed into the BTIP in Belgium and has had a significant impact on Belgian trademark law.

b. Trademark Regulation 2017/1001

Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the Union trade mark allows for the registration of a trademark for the entire European Union (called a Union trademark)

The Union mark is administered by the European Union Intellectual Property Office (EUIPO)..

3. International texts

In addition to Benelux and EU regulations, there are international treaties that harmonize and facilitate trademark law on a global level.

a. Paris Union Treaty

The Paris Convention for the Protection of Industrial Property, or the Paris Union Convention for short, dates back to 1883 and is one of the oldest international treaties in the field of intellectual property. The treaty provides a basis for the protection of industrial property rights, including trademarks, and introduces principles such as national treatment and the right of priority in trademark registrations.

b. Madrid Agreement and Protocol.

The Madrid system for the international registration of trademarks consists of the Madrid Agreement (1891) and the Madrid Protocol (1989). This system allows trademark owners to register their trademark in multiple countries with a single application. Administered by the World Intellectual Property Organization (WIPO), the system provides an efficient way to obtain and manage international trademark protection.

c. Nice Agreement

The Nice Agreement (1957) relates to the international classification of goods and services for trademark registration. This classification, known as the Nice classification, divides goods and services into 45 classes (34 for goods and 11 for services). This classification is used worldwide and is an important reference when filing trademark applications.

d. TRIPS Agreement

The TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights) is an international treaty concluded in 1994 under the auspices of the World Trade Organization (WTO). The treaty establishes minimum standards for the protection and enforcement of various forms of intellectual property, including trademarks. TRIPS requires member states to provide certain levels of protection and establish procedures for the enforcement of intellectual property rights.

2. The brand

1. Types of brands

Within trademark law, a distinction is made between different types of trademarks. This variation is necessary to meet the diverse needs of businesses and organizations. The main types of trademarks are:

• Commodity brands: These marks are used to distinguish goods. Consider brand names of clothing, electronics or food products.
• Service marks: Unlike goods marks, service marks are used to distinguish services, such as legal services, financial services or logistics services.

In addition, there are different categories of brands depending on their function and use:

• Individual brands (art. 2.1 BTIP): These marks identify products or services of one specific company. This is the most common form of trademarks.
• Collective brands (art. 2.34bis BTIP): A collective trademark distinguishes the goods or services of members of an association from those of other companies. They usually guarantee certain common characteristics, such as quality, geographical origin or production method. An example is the trademark Keurslager.
• Certification marks (art. 2.35bis BTIP): Certification marks indicate that a product or service meets certain standards or certifications, without the owner of the mark itself providing the goods or services. An example is the BIO certificate for organic products.

2. Definition of a brand

Trademark law provides protection for signs that may constitute a trademark. The requirements these signs must meet can be found in Articles 2.1 BTIP, Article 3 Trademark Directive and Article 4 Union Trademark Regulation, with the open definition being:

Trademarks may be formed by any signs, in particular words, including names of persons, or drawings, letters, figures, colors, shapes of goods or packaging of goods, or sounds, provided that these :
   a. the goods or services of an enterprise kun distinguish them from those of other companies, and
   b. may be displayed in the registry in a manner that enables competent authorities and the public to identify the object of the protection granted to the holder clear and precise .

3. Signs that can form a brand

A brand can take various forms. Digitization and creative branding have led to a wider range of possible brand forms. The main categories are discussed below:

• Wordmarks: These are trademarks consisting solely of words, letters or numbers, such as "Coca-Cola" or "Apple."
• Figurative marks (figurative marks): These marks consist of images or graphics, whether combined with words or not, such as the Nike logo.
• Color Brands: A brand can consist of one specific color or a combination of colors, provided that color is sufficiently distinctive. An example is Milka's lilac.
• Mold Marks: The three-dimensional shape of a product can also be a brand, such as Coca-Cola's bottle or Toblerone packaging.
• Sound marks: Sound can also be protected as a trademark, such as Intel's recognizable jingle. The sound must be clearly and accurately described and represented, usually through staves or an audio file.
• Other categories of brands: Consider position marks, hologram marks, assertion marks and multi-media marks. Although these are rarer, they can be registered as trademarks in some cases, provided they can be clearly and accurately described. Whether smell marks, taste marks or tactile marks can also satisfy this remains questionable.
• Combined and complex brands: Many brands combine different elements, such as words and images, to create a stronger visual or aural effect. These brands can be more recognizable and often have a greater commercial impact.

3. The basic requirements of trademark law

1. The requirement of distinctiveness

a. The legal requirement

A trademark must be able to distinguish a company's goods or services from those of other companies. This distinctiveness is essential to the origin function of the mark.

The legislation specifies situations in which a trademark is considered non-distinctive (Art. 2.11 BTIP, Article 4.1 Trademark Directive and Article 7.1 Union Trademark Regulation):

• The mark lacks any distinctive character (sub b): This refers to signs that are not understood by the public as indications of the commercial origin of goods or services. For example, slogans, simple or banal images, forms without any specific characteristics may be included.
• The mark consists exclusively of signs or indications which may serve in commerce to designate characteristics of the goods or services (sub c): These are descriptive characters that directly refer to properties such as type, quality, quantity, destination, value, geographical origin or period of production. For example, the term "Sweet" for sugar.
• The mark consists exclusively of signs or names which have become customary in the ordinary language or in bona fide commerce (sub d): These are generic terms commonly used to designate certain products or services, such as "Aspirin" for painkillers.

b. Application criteria

The assessment of distinctiveness considers:

• Perception of relevant audience: How the average consumer experiences the sign.
• Nature of goods or services: The context in which the brand is used.
• Common industry practices: Whether the sign deviates from the norm in the relevant market.

c. The changeable nature of distinctiveness.

A brand's distinctiveness is not static and can change over time:

• Integration: An initially non-distinctive sign may acquire distinctiveness through intensive and long-term use (Art. 2.2bis.3 BTIP, Art. 4.4 Trademark Directive, Article 7.3 Trademark Regulation). For example, the word "Mr. Clean" is well established as a trademark for cleaning products.
• Uitburgering: A brand can lose its distinctiveness if it becomes a generic term for a product or service. For example, "Escalator" was once a brand name, but is now a generic term for escalators.
• Time of assessment: Distinctiveness is assessed at the time of application, but may change with subsequent developments.

2. The requirement of admissibility

In addition to distinctiveness, a trademark must meet certain eligibility criteria to obtain registration.

a. Specific exclusions for certain forms or characteristics

Some signs are excluded from trademark protection:

• Signs consisting solely of the shape or other characteristic determined by the nature of the commodity: For example, the standard shape of a soccer ball.
• Signs consisting solely of the form or some other feature necessary to obtain a technical outcome (purely functional forms): For example, the shape of a key specifically designed to fit a particular lock.
• Signs consisting solely of a shape or other feature that gives substantial value to the commodity: For example, a unique bottle shape that adds aesthetic value to the product.

b. Signs contrary to public order or morality

Marks that are offensive, insulting or otherwise contrary to generally accepted norms and values will not be allowed.

c. Signs excluded by application of Article 6ter of the Paris Convention

This refers to signs containing official emblems, arms or other heraldic symbols of states or international organizations.

d. Signs that evoke a misleading connection to the commodity

Trademarks that may mislead consumers about the nature, quality or geographical origin of goods or services. For example, a brand name "Alpine cheese" for cheese that is not from the Alps.

e. Other prohibited indications

This includes signs corresponding to protected designations of origin or geographical indications, traditional indications for wines, protected guaranteed traditional specialties, and names of previously registered plant varieties.

3. The requirement of availability

A trademark must be available for use and must not infringe on prior rights of third parties.

a. The specialty principle

The specialty principle means that the protection of a trademark is limited to the specific goods or services for which it is registered. However, well-known trademarks may enjoy broader protection even for non-similar goods or services.

b. An older application or enrollment

A trademark cannot be registered if an identical or similar trademark is already registered for the same or similar goods or services.

c. A widely known trademark

Even without registration, commonly known marks can enjoy protection based on their familiarity to the relevant public.

d. Previous use of a sign not registered as a trademark

In some cases, the earlier use of an unregistered sign can prevent a later trademark application. Here we can think in the first place of the absolute ground of bad faith, where a person registers a sign as a trademark while knowing that a third party is already using the same sign. With Union trademarks, there is also a relative ground for refusal and invalidity whereby a trademark application can be refused in good faith because of the existence of other signs used in the course of trade which are of more than just local significance (such as the protection of the trade name or company name) (Art. 8.4 Trademark Regulation)

e. Other relative grounds

In addition to the previously mentioned points, there are other relative grounds that can affect the availability of a brand:

• The agent brand: This concerns situations where an agent or representative registers the trademark in his own name without the consent of the trademark owner. Such registrations can be challenged by the original trademark owner through opposition or invalidity action (Art. 2.2ter.3.b BTIP and 8.3 Trademark Regulation).
• A previous application for a designation of origin or geographical indication: Trademarks corresponding to a previously applied for designation of origin or geographical indication may be refused or declared invalid (Art. 2.2ter3.C BTIP and 8.6 Trademark Regulation).
• Other anteriorities (for Union brands only): This includes older rights such as the right to a name, to an image, a copyright or an industrial property right (Art. 60 Trademark Regulation).