Trademark infringement

Trademark infringement

Your trademark registration has been completed and your trademark is finally registered in a trademark register? Congratulations! But what exactly does your trademark protect against? Your trademark protects against trademark infringement. You can read more about this below.

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Trademark infringement

At some point, you may be faced with a competitor offering similar products under a trademark (or sign that is not registered as a trademark) that is too similar to your trademark. This may cause confusion and, as a trademark owner, you obviously want to avoid that. Not only could you lose these customers to your competitor, but the reputation of your trademark that you have carefully built up could also be damaged. For example, if the public associates certain competing products or services of inferior quality with your trademark. Your competitor may be infringing your trademark (also known as: “trademark infringement”).

Has your name been registered as a trademark? Then you, as the trademark owner, are solely authorised to use your trademark for the goods and services that you included in the trademark application and for which it is ultimately registered in the trademark register. Your trademark protects not only against the use of signs identical to your trademark, but also against the use of signs too similar to it. The prerequisite is that its use could lead to confusion.


If you discover that a competitor is using a similar sign for similar goods or services and you fear confusion, it is wise to contact them first. Perhaps your competitor is not aware of the trademark infringement and there may be a willingness to voluntarily stop using the similar sign. You can also agree that the sign will no longer be used for certain overlapping goods or services. You can record these arrangements together in an agreement. As long as the similar sign is not used for goods or services that you also offer, its use need not lead to problems. Your counterparty may even be willing to start using your trademark under licence.

Trademark infringement proceedings

If you cannot reach an agreement, you can ask the court to impose an injunction on the use of the similar sign. In that case, the court will examine whether the sign used by your competitor does indeed infringe your trademark. In order to achieve this, the use of the sign must at least cause likelihood of confusion. If the sign is completely identical to your trademark, this likelihood of confusion is automatically deemed to be present. This is the case, for example, with counterfeit products such as clothes with a renowned trademark on them, also known as “trademark piracy”.

The court assesses the likelihood of confusion globally, taking into account first of all the extent to which the sign used by your opponent is similar to your trademark. This will be considered visually, phonetically and conceptually. The court bases this assessment on the overall impression that the trademark and the competing sign make on the average consumer. The court also assesses the extent to which the goods or services for which the competing sign is used are similar to those for which your trademark is registered. When services complement each other logically (i.e. are complementary to each other), there may also be “similar” services. Finally, the court takes into account the distinctive character of your trademark. In principle, the more famous your trademark is, the stronger the protection you can derive from it.

Confusion, incidentally, is a broad concept. It does not only refer to confusion about the origin of goods or services. Sometimes the public can still distinguish a trademark and a competitive sign, but because of the similarity, they may just as well assume that there is an economic link between the companies using the trademark and sign. If the court comes to the conclusion that there is a likelihood of confusion and for that reason there is a trademark infringement, it can impose an injunction on your competitor against using the confusing sign.

Invalidity claim

If the competing sign is registered as a trademark, granting your injunction claim does not automatically get rid of that trademark. To do so, you will have to separately claim the invalidity of the trademark (also known as “cancellation”). You can first do so at the intellectual property office where the trademark is registered, including at the EUIPO and the BOIP. You can also file your invalidity action with the same court where you filed your prohibition action. However, keep in mind that for European trademarks, in the Netherlands only the District Court of The Hague has exclusive jurisdiction to rule on their invalidity.


If a similar trademark is discovered at an early stage – during the opposition period – you may still be able to file an opposition against it. With this cheap and quick procedure available at both the Benelux Office for Intellectual Property and the European Union, you may still be able to challenge the competing trademark easily and quickly.

Wieringa Lawyers

Our intellectual property lawyers specialise in trademark law and regularly advise and litigate on trademarks. We conduct proceedings both at the Benelux and European Union intellectual property offices and in the Dutch courts. Are you faced with a competing trademark that is too similar to yours? Or are you being accused of trademark infringement? We will gladly assist you. Naturally, we will first try to reach a solution together with your counterparty. In many situations, proceedings can still be averted.

We are also happy to help you with a trademark registration, conducting opposition proceedings or drafting a trademark licensing agreement .