What is a Trademark and When is Trademark Infringement Occurring?

In my previous blog, I discussed copyright law, specifically exploring whether copyright can exist for the scent and/or taste of a product. The conclusion was that taste is excluded from copyright protection, and the same seems likely for scent works. Does this mean that companies like Lancôme can no longer take action against imitation products? Not at all, as trademark law often comes into play in these cases. Read on to learn more about what constitutes a trademark and when infringement occurs.

International Trademark Law

Trademark law is international. There is no separate Dutch trademark law; instead, trademark law applies across the Benelux countries and the European Union. Trademark law is codified in the second title of the Benelux Convention on Intellectual Property (BVIE) and in the European Trademark Directive. The provisions in the BVIE and the European Trademark Directive are nearly identical, with the BVIE being based on the directive. Therefore, the Court of Justice of the EU in Luxembourg is the highest court in trademark cases.

Obtaining and Duration of Trademark Rights

Unlike copyright, which arises automatically, a trademark must be registered in order to obtain trademark rights. Registration can be done with the Benelux Office for Intellectual Property (BBIE) or the European Union Intellectual Property Office (EUIPO).

Article 2.1, paragraph 1 of the BVIE states that trademarks include "names, designs, prints, stamps, letters, numbers, shapes of goods or packaging, and all other signs that can be graphically represented, which serve to distinguish the goods or services of a company." In practice, this usually refers to word marks (which consist of one or more words, like André Rieu’s name registered as a word mark) and figurative marks (logos with or without text, such as the Lacoste crocodile, sometimes accompanied by the word Lacoste).

Not all marks are eligible for registration. A key criterion is that the mark must have "distinctive character," meaning the public must be able to recognize it as a trademark. Marks that are too descriptive are not eligible for registration. For example, "auto" or "scooter" are descriptive terms and cannot be registered as trademarks. "Audi," however, can be registered as a word mark. Likewise, combinations of descriptive words cannot serve as a trademark, such as "Biomild" for a naturally mild yogurt.

A registered trademark lasts for ten years, but it can be renewed indefinitely for ten-year periods. The trademark owner must ensure that their trademark does not become generic (more on this below) and that they continue to use it actively.

Trademark Infringement

The criteria for trademark infringement are outlined in Article 2.20, paragraph 1, subparagraphs a, b, c, and d of the BVIE. The European Trademark Directive contains similar provisions.

Infringement Sub a: Piracy

Under "sub a," a trademark owner can prohibit the use of a sign by someone else when: i) the sign is identical to their trademark, ii) it is used in the economic market, and iii) it is used for the same goods or services for which the trademark is registered. This refers to direct "piracy," where a fake product, like a counterfeit Lacoste polo shirt, is virtually identical to the original trademark. Producers of counterfeit goods sometimes make slight changes to avoid being accused of piracy, such as altering the crocodile logo by changing its eyes or tail length.

Infringement Sub b: Likelihood of Confusion (Confusion Risk)

In many trademark cases, the issue is not the use of an identical sign, but one that closely resembles the trademark, and not for identical but similar goods. The trademark holder can take action to stop the use of the competing sign "when that sign is identical or similar to the trademark and is used in the market for the same or similar goods or services, and there is a likelihood of confusion, meaning there is a risk of association with the trademark." This confusion must be assessed globally, considering all relevant circumstances. For example, an altered counterfeit Lacoste polo shirt can be challenged under this provision. However, the owner of the "Ajax" trademark for fire extinguishers cannot object to the use of the same name for cleaning products, as fire extinguishers and cleaning products are not considered similar goods.

Infringement Sub c: Broader Protection for Well-Known Marks (Tarnishing)

The holder of a "well-known" trademark can prohibit the use of a sign "when the sign is identical or similar to the trademark and is used for goods or services that are not similar to those for which the trademark is registered, if the trademark is well-known within the Benelux region and the use, without valid reason, takes unfair advantage of or harms the distinctiveness or reputation of the trademark."

For example, Bols, the holder of the "Clareyn" brand of gin, successfully objected to the use of the name "Klarein" for a cleaning product. A similar case occurred in the world of counterfeit perfumes, where L'Oréal successfully argued that using a similar sign to profit from the reputation of its well-known brand amounted to unfair advantage.

Infringement Sub d: Use Other than as a Trademark

This provision allows the trademark holder to oppose the use of their trademark "for purposes other than distinguishing goods or services, if the use, without valid reason, takes unfair advantage of or harms the distinctiveness or reputation of the trademark." This applies to cases where a trademark is used as a trade name, domain name, or in an excessively damaging parody.

Be Careful!

As mentioned earlier, a trademark, once registered and renewed, can theoretically last indefinitely. However, trademark owners must prevent their mark from becoming a "generic name" (i.e., a term commonly used to describe a product or service, rather than a brand). A trademark may be declared invalid if it "consists exclusively of signs or terms that have become common in everyday language or in commercial use" (Article 2.11, paragraph 1, sub d BVIE, read together with Article 2:26, paragraph 2, sub b BVIE). For example, "Spinning" became a generic term for a type of training, which led to the trademark being cancelled. The same has happened with words like "aspirin," "linoleum," and "vaseline"—once trademarks, now generic terms.

If the trademark owner wants to avoid this fate, they must remain vigilant and take action against unauthorized use of their mark. On the other hand, purely descriptive terms can evolve to acquire distinctiveness and can later be registered as trademarks. This phenomenon is known as "acquired distinctiveness." A well-known example is the slogan "Have a break!" which is now recognized as a trademark for Nestlé's KitKat bars.

(1) Case C-265/00, Campina/BMB

(2) Benelux Court of Justice 1-3-1975, NJ 1975, 472, Bols/Colgate

(3) Case C-487/07, L'Oréal/Bellure

(4) Case C-353/03, Nestlé/Mars