Benelux trade mark and design law: what's new on 1 June?

On 1 June 2018, a series of amendments to the Benelux Convention on Intellectual Property (BCIP) enter into force.

They introduce new procedures and grant new competences to the Benelux Court of Justice, which is now competent for appeals against decisions of the Benelux Office for Intellectual Property (BOIP).

These modifications are most welcome but will require careful consideration when defining procedural strategy.

1. Opposition procedure – Good news for the owners of trade marks with a reputation

Since 2003, the BOIP is competent to rule on opposition claims against Benelux trade mark applications or accelerated registrations and international trade mark applications designating the Benelux.

There is now a new ground that can be invoked as a basis for an opposition claim: the owner of a prior trade mark with a reputation can now oppose a later similar Benelux trade mark application for (dis)similar goods or services if it takes unfair advantage of or is detrimental to the distinctive character of the earlier trade mark.

Therefore, like for EU trade mark applications with EUIPO, the owner of a prior trade mark with a reputation for dissimilar goods or services will no longer have to wait until the later litigious Benelux trade mark application is registered before filing a cancellation procedure before the judicial courts. Such trade mark owner can now immediately launch a procedure before the BOIP and avoid the litigious trade mark registration.

The procedure is the same as the one provided for the other grounds of opposition, as well as the costs (namely, EUR 1.030 + EUR 103 per claimed trade mark above the 3rd).

2. Introduction of cancellation procedures before the BOIP

It is now possible to request the cancellation of a Benelux trade mark or of an international trade mark designating the Benelux before the BOIP (it is however still possible to submit these claims before the courts).

Like the EUIPO, the BOIP is thus now also competent to rule on claims of invalidation or revocation.

These claims may be introduced, at any time, by any interested party, on the basis of:

  • the same absolute grounds as those applied by the BOIP when examining the filing of a trade mark in case of an invalidation claim (namely, for instance, the absence of distinctive character),
  • the extinction grounds provided for in case of revocation claim, namely the non-use, becoming a generic indication or misleading by use.

Moreover, if the claim of invalidation is introduced by the owner or the licensee of a prior trade mark, the latter is also entitled to invoke the relative grounds of refusal under article 2.3 of the BCIP as well as the relative cancellation ground under article 6bis of the Paris Convention.

Procedurally, the cancellation request will be treated as closely as possible as opposition proceedings, except that there is no ‘cooling-off’ period. The claimant has two months to file its arguments and the defendant will have the last word.

The rules on the use of languages will be identical (as a rule, the defendant's language applies but the defendant can also express a preference and, if both parties agree, this preferred language will apply).

The official costs of a cancellation request amount to EUR 1.400 (+ EUR 140 per claimed trademark above the third). Such kind of administrative procedures should in principle be faster and cheaper than judicial proceedings. However, invalidity and revocation claims will most probably still be invoked in judicial proceedings and in particular as a counterclaim.

3. Appeal Procedure before the Benelux Court of Justice

All appeals against decisions of the BOIP relating to the execution of Titles II, III and IV of the BCIP, thus relating to trademarks, designs and i-DEPOTs, are now falling within the competence of the Benelux Court of Justice.

It is thus now possible to appeal decisions other than those relating to refusals or oppositions. The time limit to appeal is always two months.

As of 1 June 2018, the Benelux Court of Justice will have a new chamber composed of national judges specialised in IP matters, which will act as a substantive court to hear claims against BOIP decisions.

The current possibility of appealing BOIP refusal and opposition decisions before the national courts of appeal in Brussels, The Hague and Luxembourg will be eliminated.

This modification mainly aims at achieving a more uniform treatment of appeals and more consistent case law within the Benelux.

Annick Mottet Haugaard, Partner - annick.mottet@lydian.be