A technology brand that had built significant commercial recognition across three European markets discovered, late in its expansion cycle, that a local Belgian competitor had filed a nearly identical trademark application. The window for opposition proceedings was open – but only just. Acting without delay was the difference between protecting years of brand investment and losing exclusive rights in one of the EU's most commercially active jurisdictions.
This matter involved a cross-border trademark dispute in Belgium, where an international client faced an infringement claim risk and a conflicting IP registration by a domestic party. The enforcement strategy combined opposition proceedings before the relevant intellectual property authority with parallel preparation for civil litigation. The matter reached a resolution within approximately fourteen months of the initial instruction.
This case study outlines the client profile, the legal strategy adopted and its rationale, the key milestones encountered. The complications that arose. Additionally, three transferable lessons for businesses facing similar cross-border trademark challenges in Belgium or across the EU.
Client profile and the challenge
The client was a mid-sized technology company incorporated in a non-EU jurisdiction, with substantial commercial activity in Belgium, the Netherlands, and Germany. The business had used its brand consistently across these markets for several years. However, it had relied on an EU-wide trademark registration that predated its active Belgian operations.
The challenge arose when the client's monitoring service flagged a trademark application filed by a Belgian entity for a sign that was visually and phonetically similar to the client's mark. The application covered overlapping goods and services under the same Nice classification (the international system for categorising goods and services in trademark applications) categories. The domestic applicant had also begun using the sign commercially, creating an immediate risk of consumer confusion and brand dilution in Belgium.
The client had two concurrent concerns. First, it needed to halt the domestic applicant's registration before it achieved protected status. Second, it faced the prospect that inaction could be interpreted as acquiescence – a risk under Belgian intellectual property legislation that can limit a mark owner's ability to act retrospectively.
For a business with a planned Belgian product launch within eighteen months, the stakes were concrete. Delay was not a neutral option. Every week without a filed opposition reduced the available procedural window and strengthened the competing party's position on the ground.
Legal strategy: opposition, interim relief, and parallel preparation
The strategy rested on three coordinated tracks. Each was sequenced to maximise pressure on the opposing party while preserving the client's procedural options.
Track one was the formal opposition proceeding. Under Belgian intellectual property legislation and the Benelux Convention on Intellectual Property, opposition must be filed within a defined period following publication of the contested application. The team filed opposition on the grounds of likelihood of confusion with the client's earlier EU registration. The opposition was supported by evidence of genuine use across the EU, documentation of the client's Belgian commercial activity, and a detailed comparison of the marks across the relevant Nice classification categories.
Track two was preparation of an interim injunction application before the Belgian civil courts. Belgian civil procedure rules permit urgent applications in intellectual property matters where irreparable harm can be demonstrated. The team drafted supporting materials in parallel with the opposition filing. This served a dual purpose: it signalled the client's readiness to litigate, and it created a credible alternative if the opposition track stalled or the domestic party escalated its commercial use of the disputed sign.
Track three was a structured cease-and-desist communication. This was timed carefully – sent after the opposition filing but before any court application – to open a negotiation channel without prejudicing the client's procedural position. Belgian commercial practice generally supports pre-litigation dialogue, and the communication outlined the client's rights, the pending opposition, and the consequences of continued use under intellectual property legislation governing infringement claims.
Our intellectual property practice in Belgium covers the full range of enforcement tools, from opposition and cancellation proceedings to civil litigation and cross-border coordination across Benelux.
Key milestones and complications encountered
The opposition was filed within the prescribed period. The domestic applicant filed a counter-statement, contesting the likelihood of confusion and challenging the genuine use of the client's EU mark in Belgium specifically. This was the first significant complication.
Under the applicable rules, an opponent relying on an EU trademark registration must demonstrate that the mark has been put to genuine use within the EU during the relevant period. The domestic applicant's challenge required the client to compile a substantial use evidence file. including commercial invoices, marketing materials. Additionally. Distribution records. all translated and formatted to meet the evidentiary standards of the Benelux Office for Intellectual Property.
A second complication arose mid-process. The domestic applicant began using the disputed sign on a newly launched product line, which created an active infringement risk independent of the registration question. This accelerated the timeline for the interim injunction track. The team filed the application before the competent Belgian civil court, seeking an order to suspend commercial use of the sign pending resolution of the opposition.
The court granted provisional measures within three weeks of filing. The domestic applicant was ordered to suspend use of the sign in its current form pending the outcome of the opposition proceedings. This interim outcome materially strengthened the client's negotiating position.
Following the interim order, the parties entered mediation. A settlement was reached before the opposition reached its merits phase. The settlement included a coexistence agreement with defined territorial and category restrictions, a commitment by the domestic party to amend its application to exclude the contested Nice classification categories, and a mutual release of claims.
Businesses with technology-driven brand assets in Belgium may also wish to review our analysis of AI and technology law in Belgium, which addresses IP-adjacent regulatory considerations for digital products and services.
To explore how a structured enforcement strategy could protect your trademark rights in Belgium, contact us at info@ferrazwhitmore.com.
Transferable lessons for cross-border trademark matters
Lesson one: Opposition deadlines are absolute. Belgian and Benelux intellectual property legislation does not permit late opposition filings. Once the publication period closes, the only available challenge mechanisms are cancellation proceedings – a slower, costlier, and procedurally more uncertain route. International businesses without active trademark monitoring in EU markets routinely miss opposition windows. By the time an infringement claim becomes visible at the commercial level, the registration may already be protected. Early detection and immediate instruction are the only reliable safeguards.
Lesson two: Genuine use evidence must be maintained continuously. A trademark application or registration is only as strong as the use evidence behind it. In opposition proceedings, the opposing party will frequently challenge use – and the evidentiary burden falls on the mark owner. Businesses that treat IP registration as a one-time administrative task, rather than an ongoing commercial record-keeping obligation, expose themselves to precisely this vulnerability. Maintaining organised, jurisdiction-specific evidence of use is a practical prerequisite for enforcement.
Lesson three: Parallel tracks create settlement leverage. Opposition proceedings alone often lack the urgency needed to bring a determined opposing party to the table. The combination of a pending opposition, a filed interim injunction, and a structured cease-and-desist letter created a multi-front pressure dynamic that made early settlement economically rational for the domestic applicant. In cross-border matters – where the opposing party may underestimate the international client's willingness to litigate – demonstrating procedural readiness across multiple tracks is often the most efficient path to a negotiated resolution.
For a related analysis of how similar enforcement dynamics apply in a Iberian context, see our case study on trademark dispute resolution in Portugal.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising clients across 46 jurisdictions on intellectual property protection, enforcement strategy, and cross-border IP disputes. Our team combines Portuguese civil law expertise with English common law tradition to deliver integrated IP solutions in Belgium and across the EU. We work with technology companies, international brand owners, and in-house legal teams who need a law firm in Belgium and beyond – one that understands both the local procedural rules and the wider cross-border picture. Our IP practice includes opposition proceedings, infringement claims, and IP registration strategy across 15 practice areas. Practitioners with experience before Benelux and EU intellectual property authorities form a core part of our European team. As an international law firm, we support clients engaging a lawyer in Belgium for the first time as well as those managing multi-jurisdiction brand portfolios. To discuss your trademark enforcement needs in Belgium, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.