BENELUX TRADEMARKS – NEW YEAR EQUALS NEW CHANGES !

Written by Hanne GELDHOF and Katia DE CLERCQ

Recap of changes implemented in June 2018

In June 2018, the following changes to the Benelux Trademark System were implemented:

-        Invalidation and Revocation actions can now be brought before the Benelux Office for Intellectual Property (BOIP). This is a faster and more cost-effective alternative to court proceedings.

-          New Appeal procedure for BOIP decisions: these are now to be brought before the Second Chamber of the Benelux Court of Justice (BCJ). This Chamber includes judges from the national courts of Belgium, the Netherlands and Luxembourg. The decision-making will be faster, more efficient and more consistent.

-          Possibility to invoke trademarks with reputation as a ground for opposition, which is useful against free-riding: This ground can be used against younger marks for (non-) similar goods and/or services insofar as the use of the younger mark takes unfair advantage or is detrimental to the older mark’s reputation. 

New changes as of January 1, 2019

As of January 1, 2019, the following changes have been implemented:

-          Changes to the fee system (in line with EU TMs): fee per class system.

  • Preventing the application or registration for a too broad scope of protection can reduce the number of often unnecessary conflicts between trademark holders.
  • Lower entry fee for trademark protection in 1 class.

-          Partial renewals: whereas in the past the entire trademark registration was automatically renewed (if renewal instructions received), trademark holders now have the option to partially renew their trademark registrations (i.e. not for all goods and/or services)

-          A distinction is no longer made between application and registration number.

-          No issuance of registration certificate: Online extracts can be downloaded from the Benelux Trademark registry.

Further modernization and simplification as of March 2019

BOIP will focus on further modernization and simplification of its procedures. As of March 2019, the following will be implemented:

-          Elimination of graphical representation: All material forms can now be used to represent trademarks as long as the outcome is clear, precise durable and objective (e.g.: sound marks using an audio file)

-          Certification versus collective marks: Whereas in the past “collective marks” defined both associate marks (collective marks per se) as quality marks, the Benelux Office will make a clear distinction. Collective trademark registrations will protect signs that are owned by an association and that are being used by the association’s members. Certification trademark registrations will solely protect signs that can be used by anybody who meets the quality standards as defined by the owner of the sign. 

-          Further harmonization following upcoming alignment of Benelux Convention on Intellectual Property (BCIP) with the new European Trademark Directive

Should you have any questions concerning any of the above changes or with regard to (the optimization of) your own trademark portfolio, please do not hesitate to contact us .