BENELUX OR COMMUNITY TRADEMARK - How to choose after the recent decision of the BOIP

1. Summary

More than ever, the question whether you should apply for a Benelux or a Community trademark depends on your business strategy and especially on the territory in which you (will) genuinely use your mark.

Indeed, the choice between a Benelux or a Community trademark has become more important now that the Benelux Office for Intellectual Property (“BOIP”) has decided that the use of a Community trademark (“CTM”) in one member state of the European Community (i.e. the Netherlands) is not sufficient to constitute genuine use of such a trademark in the European Community.

2. Our analysis

The BOIP’s decision is noteworthy because it is contrary to what was generally accepted and applied by the Community trademarks office (“OHIM”), namely that genuine use of a CTM in one member state constitutes genuine use in the European Community.

An appeal has been filed against the BOIP’s decision but, if it stands, the BOIP’s decision may have a significant impact on the position of CTM owners whose CTM is subject to compulsory use (i.e. 5 years from the registration date) and who use their CTM only in one member state of the European Community.

These CTM owners will for example not be able to successfully oppose their CTM to a younger but similar Benelux trademark in opposition proceedings before the BOIP. If the BOIP’s decision is followed by the national courts in the Benelux countries, these CTM owners may also face the risk to see their CTM registration revoked for non-use on the basis of a counterclaim in infringement proceedings.

In any event, in such situations, CTM owners can always withdraw and convert their CTM application or registration into national applications in the member states where the mark is genuinely being used, while keeping the original CTM filing or priority date.

3. Our recommendation

In the meantime, we wish to encourage trademark applicants to carefully think about the territorial scope of their business strategy and thus trademark protection before applying for a Benelux or a Community trademark.