Major changes to enter into force in Benelux trademark law on June 1st

Time to have a closer look at your trademark protection in the Benelux! As from 1 June 2018, the Benelux Convention on Intellectual Property will foresee in new authorities for the Benelux Office regarding cancellation actions against a registered Benelux trademark, as well as new competences for the Benelux Court Of Justice on appeals against decisions of the Benelux Office.

New administrative procedures: cancellation and revocation actions

First, it will be possible to file cancellation and revocation actions against Benelux trademark registrations before the Benelux Office, meaning that it will no longer be necessary to go to court to request the annulment of a Benelux trademark registration (e.g. because the owner of an older trademark missed the opposition deadline of a trademark application). However, the possibility to bring these actions to court remains.
Besides the current opposition grounds, these new administrative cancellation proceedings will allow the following additional grounds:

– absolute grounds (amongst others lack of distinctiveness or descriptiveness of the sign),
– non-use,
– earlier renowned trademark, which allows the opportunity to contest a similar trademark filed for non-similar goods or services if the earlier mark enjoys a reputation in the  Benelux  territory.

The Benelux legislator also took the opportunity to add renowned earlier trademarks as a ground for opposition.

This administrative procedure will be aligned as much as possible with the opposition proceedings regarding the rules on the language of proceedings, the applicable time limits etc.

Prior trademark rights holders should welcome this new possibility as it implements the opportunity to contest the validity of a registered trademark easier, faster and at lower costs than before. We know from experience that until now, once a Benelux trademark was registered, clients whose pockets were not that deep were reluctant to contest these trademarks.

It should however be taken into account that not only you have these possibilities, but also your competitors. More than ever good protection, use and monitoring of your and others’ registered trademarks is crucial. In case of doubt on the best strategy to adopt or unsure what these changes mean for you and your rights, we will gladly assist you.

New competence of the Benelux Court of Justice 

The second major change foreseen is that appeals against decisions of the Benelux Office dated as of June 1st should be filed before the Benelux Court of Justice, and no longer before the Courts of Appeal of The Hague, Brussels or Luxembourg. It concerns all final decisions of the Benelux Office, amongst others refusals, oppositions and revocations related to trademarks, but also decisions regarding Benelux designs or i-DEPOTS.
The aim of this change is to centralize and harmonize the case-law regarding IP decisions in the Benelux. It was indeed a well-known fact that the decisions of the different Courts of Appeal – especially Brussels and The Hague – were not always in line, creating forum shopping when one decided to file an appeal.

According to the judges of the Benelux Court, the new appeal procedure should be handled faster. Another advantage of this new competence of the Benelux Court is that you will no longer be required to ask for the assistance of an attorney-at-law, because your IP counsel (like yours truly and my colleagues at CALYSTA) will be entitled to represent you before this administrative court. This will undoubtedly lower the costs involved because usually your IP counsel would have already handled the case in first instance and therefore is already fully familiar with every last detail.

By default, the proceedings will be held in writing, but oral proceedings can be requested and this should generally be allowed. The language of the procedure should be at the discretion of the appellant. The appeal deadline will remain the same as previously, i.e. 2 months as of the notification of the decision.

For more information on these new proceedings, don’t hesitate to contact us at CALYSTA !