What’s new in the Benelux trademark legislation ?
On the first of March, new rules are introduced in the Benelux trademark law. Said changes correspond to the implementation of the EU Directive of 2017 harmonizing the EU Member States trademark system. Six points deserve your attention:
- The abolition of the graphical representation requirement:
It is no longer needed to provide a graphical representation of the trademark when filing a Benelux application. This change may seem insignificant but has concrete consequences since it creates the opportunity to file a new range of trademark types including amongst others multimedia, sound, movement or pattern trademarks.
These trademark types already exist at the EU level and have allowed the football club of Barcelona to file its well-known deep tone “BARCA”: http://euipo.europa.eu/trademark/sound/EM500000017700361.
Who will be the first one to file such a new type of trademark in the Benelux ?
No doubt that these kind of marks will achieve great success among advertising companies. Just think of the jingles of radio broadcasters or the specific sounds and voices of advertisements like e.g. Devos & Lemmens advertising !
- The differentiation between collective and certification trademarks.
Up to now, Benelux trademark law did not make any difference between collective trademarks used by association members or for the certification of some characteristics, such as quality marks. Two separate categories are now clearly implemented, i.e. collective and certification marks.
The purpose of the collective trademark is to indicate the goods and services of the members of the association who owns the mark; while the certification trademark certifies that the goods or services labelled with this sign correspond to established characteristics.
This new distinction is also introduced for the existing collective trademarks in the Benelux. Their owners will be contacted by the Office or their representative to select the accurate category.
- List of goods and services:
The new Benelux legislation now makes it clear that use of general terms and class heading do not entail a protection for all goods/services covered by the class at hand. The protection applies only to the literal meaning of the goods and service mentioned, as such. This codifies the important decision of the Court of Justice of the EU of 19 June 2012 “IP Translator” (CJUE C-307/10).
More than ever, we strongly advise you to contact your trademark specialist to help you with the drafting of the list of goods and services. It is highly important to implement efficient IP rights with a tailor-made scope of protection aligned with your needs.
- Extension of the absolute grounds for refusal of signs that consist exclusively of a shape or another characteristic.
The new provision of the Benelux convention specifies that trademark applications shall be declared invalid for “signs which consist exclusively of the shape, or another characteristic (i.) which results from the nature of the goods themselves;(ii.) of goods which is necessary to obtain a technical result; (iii.) which gives substantial value to the goods;”
This ground of refusal is thus no longer limited to the shape of the sign only. “Another characteristic” could be for instance the sound of a Stradivarius since its acoustic is what gives value to the violin. Case law to come will help us better understand what is exactly meant by this notion.
- Additional rights are implemented or further developed for the trademark owner.
Amongst others, a trademark owner is now in better position to contest the entrance on the EU market of transit goods infringing their rights, even if the goods are not released on the internal market.
- Additional grounds to file an opposition or invalidity action before the Benelux Office.
Grounds on which an administrative action can be filed are harmonized and extended. Amongst those it should be highlighted that reputation of a trademark can now be invoked in an opposition procedure.
Feel free to contact Calysta’s experts to discuss the opportunities these changes may bring for you!