Registration in both Benelux and EU: double trouble?

The world is getting smaller. Boundaries blur. Often it seems attractive to your register your trademark in a large number of countries all at once, through a Community trademark application (CTM). As The Netherlands is part of the European Union, and if your business is rapidly expanding, why not register your trademark through a European filing?

However, in many cases, we advise to register your trademark step by step, beginning in the Benelux. The Benelux application procedure is not only convenient, it is a relatively rapid procedure. Within a few months you know if anyone has any objections to your trademark application and you can acquire a registration.

Against a European application you can expect objections form anywhere in the EU (27 countries!): a national trademark registration in Portugal could ruin things for your EU registration as a whole. When you first register in the Benelux you can always rely on a registered trademark.

Also, the legal scope of protection a Benelux trademark is broader than that of a European mark! E.g. it is difficult to act against a trade name on the basis of a European trademark.Recently the European mark ARGENE could not successfully oppose the Dutch trade name ARGEN-X. This is an important argument for also having a Benelux trademark.

Finally, the outcome is now in (in)famous Onel-case is still uncertain. This pending case involves the question whether the use of a trademark is required in several European countries or in one country only.

Erwin Hauër

“Hope is not a strategy.”

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