Trademark registration in Luxembourg

Unlock the power of your brand by this comprehensive trademark registration in Luxembourg. Luxembourg is a small country located in Central Europe but possesses an extremely developed and prosperous economy. Luxembourg is located in the center of Europe possessing a strategic geographical location, easily connected to major markets such as France, Luxembourg, Belgium, the Netherlands. The transport platform is developed with modern road, railway, and airport systems, convenient for freight and movement. Luxembourg’s economy is considered one of the most developed and prosperous economies in Europe. Finance is a pillar of Luxembourg’s economy, contributing more than 30% of GDP and creating jobs for its citizens. Luxembourg is Europe’s second-largest financial center, after London, with the presence of many large banks, investment funds and insurance companies. The thriving financial services sector in Luxembourg includes investment fund management, private banking, mortgage lending, and more. The service sector accounts for more than 60% of Luxembourg’s GDP and is the main source of income for the population. The thriving service sectors in Luxembourg include tourism, transport, telecommunications, information technology, etc. Luxembourg attracts many tourists to visit thanks to its beautiful landscape, rich cultural heritage and good quality of service. Therefore, more and more businesses expand their business scope here, in order to be able to distinguish their brand from other competitors, businesses need to pay attention to trademark registration procedures. Viet An Law Firm would like to guide customers through the preliminary procedures for trademark registration in Luxembourg through the article below.

Legal basis

• Statutory April 18, 2001 on Community Trademark Court Designation

The concept of “trademark” in Luxembourg

Any trademark that can be represented visually can be registered as a trademark. Trademarks can consist of one or more characters, letters, words (including slogans), or numbers. Trademarks may include drawings, symbols, holograms such as shapes or product packaging, sound signs such as music or voice, scents or colors.

Conditions for trademark registration in Luxembourg

• A trademark must be distinguishable: A trademark must be able to distinguish one business’s product or service from another’s.
• Trademarks must be representable: Trademarks must be able to represent specific products or services.
• A trademark must not infringe the rights of others: A trademark must not infringe another person’s trademark, trade name, or other intellectual property right.

Benefits of trademark registration

Trademark registration confers legal rights, allowing the owner to prevent others from using the trademark without prior permission, thereby preventing counterfeiting. Anyone can file a trademark application: an individual, a freelancer, a joint-stock company or any other organization.

Enterprises can perform an online search to check if a trademark is registered on the following databases:

• Benelux brand;
• Community Brand;
• International trademarks;
• TMview (currently has more than 2.5 million registered trademarks).

Trademark registration in Luxembourg

In the Benelux, there is no longer a national registration system, the protectorate covers the territory of all 3 states. Rights to the Benelux trademark are established by filing an initial application at the Benelux Intellectual Property Office or through the Ministry of Economic Affairs, Intellectual Property Office.

Note: The Benelux is the collective name for an economically connected region consisting of three small countries located in Northwestern Europe: Belgium (Belgium), the Netherlands (Netherlands) and Luxembourg.

If the business expands to a European level, the owner can file a European trademark application at the European Union Intellectual Property Office (EUIPO). Community marks have legal force and are equally protected throughout the European Union.

If the enterprise owns the trademark and wants international protection, then the Madrid Agreement and Protocol on the International Registration of Trademarks allows for the protection of this trademark in all member states simply by filing a single application in a single office,  one language and pay only a series of fees in a single currency (Swiss franc). International registration has the same effect as the national procedure carried out in each individual country. To file an international trademark application, the owner must already own the trademark or at least have filed a similar national trademark application.

Therefore, to register for trademark protection in Luxembourg, enterprises must register for trademark protection through the EU or Madrid system

Trademark registration in Luxembourg through the European Union (EU) System

• The EU trademark provides uniform protection across all member states of the European Union.
• The European Union Intellectual Property Office (EUIPO) in Alicante (Spain) is responsible for registration.
• The initial term of protection of the EU trademark is ten years. It can be renewed indefinitely according to subsequent ten-year terms.
• Regulation (EU) No 2017/1001 of the European Parliament and Council of 14 June 2017 contains all legal provisions relating to EU trademarks.

Trademark registration documents in the European Union (EU)

Application form: The application form is downloadable from the European Union Intellectual Property Office (EUIPO) website. The applicant needs to complete information about the owner, trademark, and list of goods/services.

Brand image: Clear, sharp, fully branded images in JPG or PNG format, up to 2 MB in size.

List of goods/services: A detailed description of the goods/services for which you want to protect your trademark through the Nice classification system.

Registration fee: Basic fee: €850 for each additional group of goods/services the fee will increase by €150

Registration of trademark protection in Luxembourg through the Madrid System

The Madrid system is a convenient and cost-effective Luxembourg league for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• Luxembourg acceded to the Madrid Agreement on 1 September 1924.
• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Luxembourg acceded to the Madrid Protocol on 1 April 1998.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Singles include the Madrid Singles of Vietnamese origin and the Madrid Applications with Luxembourgish designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or Luxembourgish;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of classes of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service of Viet An Law Firm

• Perform the search and notify customers in writing the results of trademark search in Luxembourg;
• Prepare the dossier and directly file and monitor the status of the trademark application in Luxembourg on behalf of the trademark owner;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Luxembourg;
• Support monitoring, representing the resolution of objections and feedback with intellectual property representatives implementing procedures in Luxembourg.
• Receive dispatches, certificates and hand over to customers (if any).

If you want to file a trademark application in Luxembourg, or patent registration, other IP registration, please contact Viet An Law Firm for the most effective support.