NETHERLANDS Law and Practice Contributed by: Radboud Ribbert and Wouter van Wengen, Greenberg Traurig, LLP
• the Berne Convention, which harmonises certain aspects in relation to copyright and related rights; • the Trade Mark Law Treaty, which provides for a harmonisation of the trade mark registration process internationally; • the Madrid Agreement, which is a protocol that allows for international registration of trade marks; • the TRIPS Agreement, which sets out the minimum standards of protection to be pro - vided by each member; • the WIPO Copyright Treaty; and • the WIPO Performances and Phonograms Treaty. All of these treaties, conventions, and agree - ments are self-executing. The Netherlands recognises word marks, figura - tive marks, figurative marks with word elements (eg, logos displaying the brand name), shape marks, colour marks, sound marks, pattern marks, position marks, hologram marks, motion marks, and multimedia marks. In addition, it is possible to register certification and collective marks. Certification marks set out the standard for being able to use the mark. Collective marks can only be held by public law entities (eg, geographic indicators). 2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks Industrial designs are generally precluded from trade mark protection insofar as they are used to protect a purely functional design. However, there are limited exceptions to this rule of thumb. For instance, the display of a Lego block on
watches has been deemed valid by the Court of Justice of the European Union (CJEU). The Netherlands has exclusively designated the use of certain titles by statute. Primary examples of this are terms such as “Koninklijke” (“royal”) and the designation of a “Ridder” (“Sir”). The Netherlands does not protect marks that are famous outside the jurisdiction but are not yet in use within the Netherlands. However, rights- holders of trade marks that are well-known in the Benelux or elsewhere in the EU may oppose a trade mark application or start a cancellation proceeding against a registered trade mark for the same or confusingly similar sign and goods or services. 2.2 Essential Elements of Trade Mark Protection In order to register a trade mark in the Benelux or European Union, the application must with - stand relative and absolute grounds for protec - tion. Relative grounds include whether there is a prior registration that could conflict with the relevant mark. Absolute grounds focus on the inherent characteristics of the trade mark. The most important threshold is that the trade mark must be distinctive. The acquiring party only has a duty to prove or remedy a lack of distinctive - ness if the registering office determines that this threshold is not met. The factors to be consid - ered in the assessment of distinctiveness are as follows: • The trade mark should be capable of identify - ing the products and/or services offered by the company as distinct from those offered by other companies. • This assessment must be made concern - ing the goods and/or services offered by the company. The perspective of a “reasonably
359 CHAMBERS.COM
Powered by FlippingBook