16 May What’s in a name?
By Ilse Van Marcke Senior Trademarks | Designs Attorney Ipsilon Benelux | Ipsilon Group
As a Belgian start-up, you undoubtedly already had a name in mind to distinguish your company and/or your products and services from those of other companies. But what if it turns out that the same name has already been registered as a trademark by a third party? Can you be forced to change your name? Or are you still entitled to file for trademark protection yourself? It’s better to be safe than sorry.
TYPES OF DESIGNATIONS: TRADEMARK, TRADE NAME AND COMPANY NAME
First of all, a trademark should not be confused with a trade name or company name, although they can coincide.
The company name is the official name of your legal entity (NV, BV,…) which is included in the articles of association and published in the Belgian Official Gazette. This name serves merely to identify the legal entity and does not have a marketing function.
Unlike the company name, the trade name is the name under which your company participates in the course of trade. Your trade name is therefore visible to the public and has a marketing purpose. Although it is possible to use the same sign as a company name and as a trade name (e.g. Delhaize), this is certainly not a requirement.
Finally, a trademark is a sign (word, logo, etc.) that serves to distinguish your products and services from the products and services of other companies. While the company and trade name serve to identify the company, the purpose of a trademark is to distinguish the products or services of company X from the products or services of company Y. Nevertheless, trademark and trade name can also coincide. Consider, for example, “Delhaize,” which is used as a trade name but is also protected as a trademark for retail services.
What steps should you take to adequately protect each of these designations and, more importantly, what is the scope of such protection?
COMPANY NAME: REQUIREMENT OF USE AND PUBLICATION IN THE BELGIAN OFFICIAL GAZETTE
You can acquire the right to a company name (for the whole of Belgium) simply by entering it in the articles of association. In this regard, the date of publication of the articles of association in the Belgian Official Gazette is decisive.
Whoever first acquires a company name is entitled to prevent third parties from adopting an identical or highly similar company name that could lead to confusion. Unfortunately, this sometimes goes unnoticed, resulting in the coexistence of several legal entities with the same company name. When choosing your company name, it is therefore recommended to have an expert conduct a prior availability search in order to avoid any claims.
TRADE NAME PROTECTED AS FROM THE DATE OF FIRST USE
The right to a trade name belongs to the person who first makes visible, public and continuous use of it. This condition is related to the fact that the trade name is the signboard of your business. Therefore, you do not need to follow a formal registration procedure to acquire trade name rights. However, to prove the first use towards other companies, it may be useful to register the trade name with the Crossroads Bank for Enterprises.
As the first user, you can act against a competitor who sets up a business under an identical or highly similar trade name. However, the protection of the trade name is limited to i) the territory where the company operates and is known under that name (this may be a city, region or country) and ii) competing activities. Therefore, the wider and better known a trade name becomes, the broader the scope of protection.
A recent judgment from the Court of Enterprise of Antwerp confirms that the scope of protection of a trade name is entirely determined by the use made of this name. According to the Court, the Dutch company Fruitful-Berries BV cannot assert trade name rights against the defendant because it fails to prove having operated under the name “Fruitful-Berries” in the Belgian market. The mere reference to a website, which is not specifically aimed at the Belgian market, or to its presence on LinkedIn, does not suffice. Nor does the fact that its parent company is a Belgian legal entity prove any activity on the Belgian market.
TRADEMARK: REGISTRATION REQUIREMENT
Unlike trade name protection, trademark protection can only be obtained after registration of the trademark in the trademarks register (e.g. Benelux or entire EU), regardless of when it has been used. The mere use of a trademark does not confer any trademark rights, at least not in the Benelux. Therefore, if you do not file for trademark protection, you should bear in mind that a third party can still file the trademark and prevent you from using the sign any further, even if you were the first user (with some exceptions such as if that third party is acting in bad faith).
As the owner of a registered trademark, you have a number of important exclusive rights, including the right to take action against the use or registration of identical or similar trademarks (and trade names) for competing products or services, to the extent that a likelihood of confusion among the relevant public can be demonstrated. For example, the famous Danish restaurant Noma was entitled to prevent a local restaurant in Belgium from using the trade name NOMA based on its EU trademark registration for NOMA for “services for providing food and drink” (even if the trademark owner is not actively using its trademark in Belgium).
AUTHOR’S OPINION: BETTER SAFE THAN SORRY
Although not a necessity, it is perfectly possible to use the same sign as a company name, trade name and trademark. Even in this case, where you can already rely on the protection of the trade and company name, a trademark registration should be a no-brainer. For example, a trademark registration in the Benelux grants you an exclusive right to use the sign in the entire Benelux, even if you are only active in Belgium at the time of filing the application, whereas the territorial scope of protection of the trade name is entirely determined by its actual use (which must then also be proven in infringement proceedings). Consequently, a Benelux trademark registration allows you to start operating under the same name in the Netherlands or Luxembourg in the future.
In any case, when choosing a trade name, you should take into account the (registered) trademarks of third parties, and vice versa, in order to avoid conflicts afterwards. To this end, you can call upon the IPSILON experts to conduct the necessary checks.
Sources:
“Trade name and company name”, 2022, https://economie.fgov.be/en/themes/intellectual-property/intellectual-property-rights/specific-protection-regimes/trade-name-and-company-name.
Court of Enterprise Antwerp, 22 January 2025, IEFbe 3862; A/24/5502 (Frescura and Fruitful-Berries v./Fruitful Ventures).
J. Pollie, “Horecazaak uit Kortrijk oet naam veranderen na klachte van Deense sterrenrestaurant Noma, ‘het best restaurant ter wereld’”, 2024, https://www.vrt.be/vrtnws/nl/2024/09/13/gastrobar-noma-uit-kortrijk-moet-naam-veranderen-na-klacht-van/.