Trade marks and trade names offer businesses protection against unauthorized use of identical or similar signs to such marks and names, but they are subject to different requirements and serve different legal purposes.
Trade Marks and Trade Names: How They Differ and Overlap
Protection of signs distinguishing a product or service (usually by a trade mark) differs from the protection of the name of a company (via a trade name), although both can overlap.
For instance, the EU Trade Mark regulation states that confusion as to the commercial source from which the goods or services emanate may occur when a company uses the same or a similar sign as a trade name in such a way that a link is established between the company bearing the name and the goods or services coming from that company.
What Is a Trade Mark?
A trade mark is a distinctive sign used to identify and protect specific goods or services. In the Netherlands, trademarks must be registered with the Benelux Office for Intellectual Property (BOIP) for legal protection. In Europe, with the European Union Intellectual Property Office (EUIPO).
Key features of a trade mark
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A trade mark is only protected after registration.
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A trade mark grants exclusive rights to use the mark for specific goods/services.
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Can consist of a word, logo, slogan, and more exotic signs such as a shape and sound.
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Allows enforcement against unauthorized use, even in industries that do not compete directly.
What is a trade name?
A trade name is the name under which a company conducts business. For instance, Dutch trade name law is governed by the Trade Name Act (Handelsnaamwet) and provides protection as soon as the name is actively used in commerce—registration is not required (but recommended).
Key features of a trade name
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Trade name protection starts from the moment of use in business dealings.
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It must not be identical, similar or misleading to an existing trade name in the same sector.
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Registration at the Chamber of Commerce strengthens your position but does not grant exclusivity.
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The main purpose is to identify the business itself rather than its products or services.
Can a trade mark and trade name coexist?
In short, a trade mark identifies the goods or services businesses offer, while a trade name is the official name under which a business operates. In many cases, the same word or sign serve both functions.
Can a trade mark and tradenames coexist? Yes, but conflicts may arise for instance if:
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A later trade name is confusingly similar to a registered trademark.
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A trade mark holder takes action against an older, unregistered trade name.
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A trade name gains a strong reputation preventing use of a similar later trademark.
Infringement of a trade mark may also comprise use of the sign as a trade name, or similar designation, as long as the use is made for the purposes of distinguishing goods or services.
Enforcement of trade mark and trade name rights
There are different ways in which trade mark and/or trade name rights can be enforced. We will discuss two types of proceedings.
Administrative proceedings: opposition and invalidity
These proceedings are handled by the BOIP or EUIPO trade mark offices (not a court). These types of proceedings may include:
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Opposition: Filing an opposition against a new trade mark application.
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Invalidity: Filing invalidity proceedings against an already registered conflicting trade mark.
These procedures can be based on a registered trade mark, but sometimes also on an earlier trade name, depending on national laws.
Court proceedings: trade mark or trade name infringement
If your name is registered as a trade mark, exclusive rights are granted for the goods or services for which it is registered. Trade mark owners can take legal action against third parties who:
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Use an identical or confusingly similar sign for similar goods/services;
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Take unfair advantage of the mark’s reputation;
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Dilute the distinctive character of the trade mark.
Similarly, trade name holders can act against:
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Competitors who use a confusingly similar name;
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Businesses exploiting the reputation or goodwill of an existing trade name.
Trade name enforcement may include remedies such as cease-and-desist letters, court injunctions, and compensation for damage.
How to protect a trade mark or trade name effectively?
Understanding the difference between a trade name and a trademark is essential for all business owners. While a trade name protects the company’s identity in commerce, a trademark ensures exclusive branding rights for goods and services. For maximum protection, businesses should consider securing both and monitor competitors to prevent infringing use.
Do you have questions about protecting or enforcing your trade mark or trade name? Feel free to reach out, we’re here to help.
