Register a trade mark for a software company

Registering a software trademark: what actually happens

Registering a trademark for a software company means that the business name, product name or logo is recorded with the BOIP (for the Benelux) or the EUIPO (for the entire EU), in the Nice classification classes that match what the company offers — software itself, and often also the services surrounding it such as development, maintenance or cloud solutions. Without that registration, no exclusive right to the name arises, even after years of use: another party can still have the same or a very similar name registered and subsequently ask the first user to stop using it.

For software companies, the choice of classes is a recurring point of attention, because software is offered both as a product and as a service — think of a downloadable application versus a subscription to a platform. Which combination of classes matches the actual offering is described in the Nice classification, and an incorrect or too limited choice of classes can later mean that the trademark is not protected for a service that the company is now offering. A check against existing registers in advance provides an indication of any similar trademarks, but does not guarantee that an application will be accepted — that decision rests with the BOIP or the EUIPO itself.

Where this is based on

The fact that a trademark right arises through registration and not through use alone follows from the structure of the BOIP and the EUIPO as found in their registers. Which Nice classification classes apply to software as a product and as a service is described in the Nice classification of the WIPO, which is used by both the BOIP and the EUIPO in classifying applications.