Need to know: Changes to Benelux Trademark Law

A number of important amendments were introduced to Benelux Trademark Law in 2018 and there are more to come in early 2019. A summary of the recent and expected changes is set out below.

RECAP: Key changes as of 1 June 2018:

• It is now possible for owners of trademarks ‘with reputation’ to oppose a new trademark application in the Benelux on the basis that the newer mark takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the established trademark;
• The Benelux Office for Intellectual Property (BOIP) has introduced a new administrative procedure to request the cancellation of a trademark; and
• Appeals against BOIP decisions must now be brought before the, newly introduced, second chamber of the Benelux Court of Justice, which has become the de facto body for such decisions.

Further changes are expected in early 2019 once the EU Trademark Directive has been implemented into Benelux trademark legislation.

The importance of reputation: New grounds added to opposition proceedings

The BOIP added a new ground for opposition proceedings on 1 June 2018, namely: ‘sub c’. This addition to the relative grounds in the Benelux Convention for Intellectual Property (BCIP) makes it possible for owners of a ‘trademark with reputation’ to base a Benelux opposition on a new grounds, enabling them to oppose an application for a younger, similar mark, irrespective of whether it is used for similar of non similar goods and services. That use must, however, take unfair advantage of, or be detrimental to, the distinctive character or the repute of the established trademark. Previously, trademark owners were forced to start court proceedings if they wished to oppose a mark on this ground. Its addition broadens the scope of opposition proceedings, filling an important gap for trademark owners.

New administrative cancellation procedure available at the BOIP

At present, many EU countries do not enable trademark owners to request the revocation or invalidation of a trademark at their national trademark office. In such countries, trademark owners are forced to go to court if they wish to request the cancellation of a trademark registration. This was also the case in the Benelux until the introduction of a new administrative procedure on 1 June 2018. As of this date, trademark owners and other stakeholders are able to request a trademark to be revoked or annulled at the BOIP, providing a quicker and less costly alternative to court proceedings. We believe this is good news for trademark proprietors in the Benelux.

At present, a cancellation claim can be based on the grounds given in article 2.28, paragraph 1, sub a–e of the BCIP, meaning that annulment can be requested by any interested party of:

• signs that cannot constitute a Benelux trademark in the meaning of article 2.1, BCIP; and
• signs that are devoid of distinctive character, including:
•      signs that are descriptive of the relevant goods and services;
•      customary signs;
•      signs contrary to accepted principles of morality or to public policy;
•      deceitful signs; and,
•      signs for wines containing geographical indications.

A revocation claim by any interested party can be requested if the respective trademark:

• does not fulfil the criteria for genuine use (within the limits laid down in Article 2.27(2), BCIP)
• became a generic indication;
• became deceitful by use.

A revocation claim by the proprietor of a prior trademark or its licensee can be requested on the grounds of article 2.20, paragraph 1, sub a – c, BCIP, if the later trademark is:

• identical to the prior trademark and filed for identical goods or services;
• identical or similar to the prior trademark and filed for identical or similar goods or services, where there exists on the part of the public a likelihood of confusion;
• similar to the prior trademark that enjoys a reputation in the Benelux territory, where use without due cause of the later mark would take unfair advantage of or be detrimental to the distinctive character or the repute of the prior trademark.

Or if the later trademark:

• could create confusion with the well-known earlier trademark.

Once the new EU Trademark Directive is implemented into law in the Benelux (expected in the first quarter of 2019), it is likely that a further change will be made to this new cancellation procedure to bring it into (further) conformity with the new Directive. In particular, the implementation of the new Directive would also introduce the possibility of basing a cancellation claim on bad faith. (For further changes that will be introduced by the EU Trademark Directive, please see below.)

Centralisation of Benelux trademark decisions at the Benelux Court of Justice

Before 1 June 2018, appeals against BOIP decisions had to be brought before one of the three national trademark courts of the Benelux (The Hague, Brussels and Luxembourg), while the Benelux Court of Justice functioned solely as the Benelux supreme court. At times, there have been notable differences between the decisions of (mainly) the The Hague and Brussels courts, and the need for further harmonisation of Benelux trademark decisions was identified as a result. As of 1 June, therefore, appeals against BOIP decisions must be brought before the, newly introduced, second chamber of the Benelux Court of Justice. It has become the de facto body for such decisions, and as such is comparable with the EU system in which the EU General Court operates as the de facto body, while the first chamber of the Benelux Court of Justice, like the Court of Justice of the EU, will function as the supreme court, handling questions as to the interpretation of law. The intent being to achieve the desired harmonisation by centralising Benelux decisions. The appeal period for both chambers is two months. While the (specialised) judges have already been sworn in, it is noteworthy that there is no mandatory requirement for representation by a member of the bar, making it possible for trademark attorneys to act as representative.

What’s next? Further changes expected in early 2019

The EU Trademark Directive that entered into force on 13 January 2016 offered a three-year implementation term to EU member states. After the implementation of the new Trademark Directive in the national trademark laws of the EU member states, trademark law within the EU will be more harmonised. Please note, however, that there may still be some differences between trademark law within the EU; for example, in the Benelux it is not possible to base a claim on other rights than trademark rights, whereas on EU level it is possible to base an opposition or cancellation claim on other rights, e.g. trade name rights.

The first notable change that is implemented in the Benelux system in 2019 is the change in the fee system on 1 January 2019.

• Changes to the fee system > one fee per class as of 1 January 2019
  At present, applicants pay one fee to register a trademark in three classes (‘three classes for the price of one’). As a result, the trademark register is cluttered with trademarks that are not necessarily used for all the classes in which the trademark is filed. This has implications for the availability of new trademarks and the reliability of the register. To tackle these negative implications, a ‘one fee per class’ system will apply after the entry into force. It will become more expensive to register a Benelux trademark in two classes or more after this date; therefore, applicants who wish to file a Benelux trademark in two classes or more would be advised to do so before 1 January 2019.

  The ‘one fee per class’ system will also apply to renewals of existing Benelux registrations. Benelux registrations that expire before 1 January 2019  will be subject to the current fee system. Benelux registrations that expire on or after 1 January 2019 will be subject to the new ‘one fee per class’ system; therefore, trademark proprietors whose Benelux trademarks are up for renewal (soon) and wish to renew in two classes or more would be advised to do so before 1 January 2019.

It is expected that the Benelux legislator will implement the remaining part of the Trademark Directive into the BCIP in the first quarter of 2019, meaning that, as per the implementation date, the following changes will come into effect:

• From graphic representation to clear and precise representation: The criteria for registrability will no longer include a requirement for ‘graphic representation’. This will make it possible to register signs that cannot be seen and/or that are difficult to capture in a 2D image (such as sounds, holograms, motion marks, etcetera), so long as they can be represented in a manner that is clear and precise (and it is distinctive for the goods and services for which protection is sought).
• Distinction between collective and certification marks: In the Benelux, the term collective mark is currently an umbrella term that both covers association marks as well as quality marks. It is expected that, as per the implementation date of the Trademark Directive, the term collective mark will protect association marks only and quality marks will be protected via the new certification mark. We will update you on the implications of this change once more details about the (possible) transition period (a.o.) becomes clear.

What do brand owners need to do?

The recent and upcoming changes in Benelux trademark legislation brings new opportunities for trademark owners, but might require work to be done to maintain existing registrations. As a result of the changes set out above, it is important, as a Benelux trademark owner, to analyse your trademark portfolio and to take action where necessary, to ensure your trademarks are protected and can be enforced in the most optimal way.

If you have any questions about the updates in Benelux trademark legislation in general or with regard to your current trademark portfolio, please speak to your Novagraaf attorney or contact us below.