A Benelux registration protects your name or logo in the Netherlands, Belgium and Luxembourg. A Union trademark protects within the 27 member states of the European Union. Outside that territory — the United Kingdom, Switzerland, the United States, China, and so on — that protection does not apply. There, someone else can simply register your name, even if it has been registered in your name in the trademark register of the EUIPO or the BOIP for years.
If you also want certainty outside the EU, you must arrange something separately in those countries, and the way to do so varies from country to country. Some countries assess an application strictly on substance, others barely at all. Some require proof that you actually use the trademark, others do not. The duration of protection, the language of the procedure and the deadlines vary. This makes international trademark protection a different matter from the choice between Benelux and EU, with its own considerations per market.
What a Benelux or EU registration does and does not cover
The starting point of trademark law is territorial: protection applies only within the territory for which it is registered. A Union trademark is broad in that regard — it covers all member states in one go — but it stops at the outer border of the Union. If you also sell to customers in the United Kingdom or supply to a factory in Switzerland, that falls outside your Union trademark. The same applies in reverse: if you have not registered anything in the Benelux, you cannot rely on a foreign registration there either.
Two routes to protection outside the EU
There are broadly two ways to register a trademark outside the EU. The first is a direct application to the national trademark office of the country in question, with a local procedure, a local language and usually a local representative who files the application on your behalf. The second is an international application via the Madrid system of the World Intellectual Property Organization (WIPO), which builds on an existing basic registration — for example your Benelux or Union trademark — and from there seeks protection in the designated countries of your choice.
Both routes have their own conditions and their own costs, and which route is appropriate depends on the countries in which you are actually active or wish to become active. This is a consideration that differs per business and for which enquiry with a trademark representative or the relevant office is necessary.
How countries really differ
The Nice Classification that divides the classes is used worldwide, but how a trademark office then assesses an application varies greatly. Some countries only examine whether the sign is suitable as a trademark in itself; others, such as the United States, also actively examine whether it is similar to existing trademarks and may request additional evidence.
The use requirement is another point of difference. In the EU and the Benelux, a trademark must actually be used after a certain period, but that only becomes relevant if someone challenges the trademark. In a number of other countries, you must actively provide evidence of use, sometimes even at the time of application and often again at renewal, without any dispute being involved.
The duration and renewal systems also vary: whereas ten years and unlimited renewal are fixed rules in the EU and the Benelux, other registers have different periods or interim obligations. And almost everywhere it applies that you need a local representative for the procedure itself — unlike at the BOIP and EUIPO, where you as the applicant can file yourself with a free account.
What this means for your planning
marcai.eu focuses on registration and monitoring within the Benelux and the European Union, via the BOIP and the EUIPO. For protection outside this area — whether through a direct national application or via the Madrid system — you need a trademark attorney who is familiar with the local procedure; we do not handle that process ourselves. What we can do for you is put the foundation in order: check whether your name is available within the Benelux or EU, determine the correct classes and prepare the application on which any future international expansion can build.
To determine whether that expansion is relevant, it is useful to first be clear about which countries you currently supply to and where that will expand in the coming years. That inventory determines whether a route via the Madrid system, a separate national application, or for now only registration within the EU is appropriate — and you can check in a few questions whether your name is available within the Benelux or EU. Questions about what is and is not part of our services are clearly set out on the frequently asked questions page.
If your name is not registered anywhere, not even within the Benelux or the EU, that is almost always the first step, regardless of any future plans abroad. We have each situation examined to determine which application is right for you, and on the page about our approach you can read exactly which sources and registers we consult.
Do you want to know where you stand today within the Benelux or the EU, before you delve into international options? Take the free quick-scan or browse the knowledge base on marcai.eu — both are accessible without an account and give an immediate indication.