It forces you to pull out all the stops, and this results in a very special dynamic between the client and trademark attorney.’ How did you respond as a company when you received a one-line letter like that from the authority?īakker: ‘It’s clearly not the kind of thing we encounter on a daily basis. That can make it difficult for us as trademark attorneys, and obviously for clients too, to challenge such decisions. This was the only explanation given, since the authority does not provide detailed reasons for rejecting a trademark application. In response to our trademark application, we received a letter from the BOIP stating that they found it “to lack distinctiveness/be descriptive”. Noorlander: ‘Unfortunately, we were unable to do this at first. The authority (the Benelux Office for Intellectual Property (BOIP), ed.) always checks on absolute grounds for registering the trademark: it should not be descriptive and it must be of a sufficiently distinctive character to serve as a trademark.’ How do you prove that a word such as WIJ has acquired distinctiveness and is not descriptive? Noorlander: ‘Just because a trademark was registered for ‘WIJ’ in class 16 back in the 1970s does not mean that you can automatically register the same name in other classes in 2016. By contrast, ‘WIJ’ is such a common word that I informed the client that we should expect some obstacles when registering it as a trademark.’ The ‘WIJ’ trademark had enjoyed protection for a long time, so why was it uncertain that this protection could be renewed or increased? Noorlander: ‘Invented or fanciful trademarks are more likely to be available and therefore to be accepted. When it comes to these types of trademarks, it is especially important to ensure they are well-protected and to maintain as much exclusivity as possible.’ That’s probably harder to achieve from a legal perspective. Noorlander: ‘When a trademark has been lifted from the dictionary as it were, we often find that someone else will also start using it. We come across such parties from time to time and you need to be able to defend yourself in such situations.’ This is often done by parties acting in relative ignorance, and which may have failed to perform any research at all to determine the availability of the mark name. Therefore, it can be easily copied and initiatives with similar names are frequently launched on the market. It’s particularly important that we protect our trademark properly because ‘WIJ’ is such a common Dutch word. There are separate classes for advertising and market services of significant importance to WIJ, for printing photos, providing advice and information on holidays, and so on.’īakker: ‘Back then, we were also working on the launch of our WIJ à la Mama blog and vlog platform, so we applied to register the trademark in that category as well. At first, the WIJ trademark was only registered in class 16, which mostly concerns printed matter. Trademark law is divided into 45 classes of goods and services classes 1 to 34 consist of goods, while the other classes relate to services. But as the activities of WIJ Special Media had expanded into many other areas over the years, the level of protection could be supplemented. Noorlander: ‘There was already a strong WIJ trademark for printed matter, which had been registered for a very long time. Noorlander: ‘When companies continue to grow and launch new products and services, it’s up to us as advisors to examine the intellectual property portfolio at certain times to check whether they still provide adequate protection.’ And you concluded that this was no longer the case? The ‘WIJ’ brand is used for communications for all of our consumer concepts apart from the ‘Blije Doos’ pregnancy box.’ The WIJ magazine, wij.nl website, WIJ à la Mama blog platform, photo service, discount club, online children’s bookshop and the holiday division, each of which has their own sub-brand, all benefit from the recognisability of the main brand, ‘WIJ’. It’s a very good trademark for us because we can include many different editorial and commercial activities under that umbrella. WIJ is a strong trademark that is extremely well-known. What was it that led you to increase the level of protection two years ago?īakker: ‘We have two major trademarks: the ‘Blije Doos’ pregnancy box and WIJ. WIJ was first registered as a trademark in 1974. A dual interview with Marcel Bakker, director of WIJ Special Media, and Yvonne Noorlander, trademark attorney at NLO Shieldmark. The key to success was ultimately found in the client’s perseverance and the intensive collaboration between the client and the advisor.
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