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Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Ownership of a trademark is acquired through registration. Ownership is therefore determined on a first-to-file basis in the Benelux.
What legal protections are available to unregistered trademarks?
An unregistered but well-known trademark in the sense of Article 6bis of the Paris Convention may prevent the registration by a third party of that trademark or a trademark which is likely to create confusion, and entitles the owner to act in case of infringement.
How are rights in unregistered marks established?
Without registration, no protection is available unless the unregistered mark is a well-known trademark in the sense of Article 6bis of the Paris Convention.
Are any special rights and protections afforded to owners of well-known and famous marks?
Yes. The existence of an unregistered but well-known trademark in the sense of Article 6bis of the Paris Convention prevents the registration by a third party of that trademark or a trademark which is likely to create confusion, and entitles the owner to act in case of infringement.
The trademark must be well known by the relevant public throughout a substantial part of the Benelux territory. The person invoking the right should also prove the risk of dilution of the well-known trademark and that the consumer is led to believe in the common origin of the two products or services.
To what extent are foreign trademark registrations recognised in your jurisdiction?
To enjoy protection in the Benelux territory, a trademark must be registered in the Benelux or the European Union, or should result from an international registration designating Benelux as the territory.
Without registration covering the Benelux, no protection is available under trademark law, unless the trademark at stake is a well-known trademark in the sense of Article 6bis of the Paris Convention.
Another form of protection for foreign trademarks is provided under Article 2.4 (f) of the Benelux Convention on Intellectual Property, which stipulates that a trademark cannot be registered in bad faith in the Benelux territory. This article prohibits filing with knowledge, resulting from direct relationships, of the normal use in good faith of a similar trademark for similar goods or services by a third party outside Benelux territory during the preceding three years, unless the third party consents or such knowledge was acquired only after the applicant started to use the trademark on Benelux territory.
A right of priority is also recognised for foreign trademark registrations.
What legal rights and protections are accorded to registered trademarks?
A registered trademark gives its owner an exclusive right to prohibit any third party (without the owner’s consent) from:
- using in the course of trade a sign that is identical to the trademark for goods or services that are identical to those for which the trademark is registered;
- using in the course of trade a sign in respect of which – because it is identical or similar to the trademark and the goods or services covered by the trademark and the signs are identical or similar – a likelihood of confusion exists among the relevant public that includes the likelihood of association with the trademark;
- using in the course of trade a sign which is identical or similar to the trademark for goods or services which are not similar to those for which the trademark is registered, where:
- the trademark enjoys a reputation in the Benelux territory; and
- use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the trademark;
- using a sign for purposes other than those of distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the trademark; and
- registering a sign which is identical or similar to the prior trademark.
Who may register trademarks?
Any natural person or legal entity, including public bodies, can register a trademark. Residence within the Benelux is not required.
What marks are registrable (including any non-traditional marks)?
Names, drawings, imprints, stamps, letters, numerals, shapes of goods or packaging and any other signs that can be represented graphically and distinguish the goods or services of an undertaking can be registered as trademarks.
However, signs consisting solely of a shape which results from the nature of the goods, gives a substantial value to the goods or is necessary to obtain a technical result cannot be registered.
Marks are divided into:
- word marks – the name under which a product or service is put on the market;
- device marks – logos, labels and (for example) words in a special font or which are presented in a special layout;
- shape marks – in certain cases the three-dimensional shape of a product or packaging can be a mark (eg, a specially designed perfume bottle);
- colour marks – in exceptional cases a single colour or a combination of colours can be a mark. This is the case when the public recognises a certain product or service by its colour (eg, the blue gas tanks used at campsites); and
- sound marks – advertising jingles are sometimes so well known that the public immediately recognises what they refer to on hearing it. In such cases, the relevant sound may be regarded as a mark and eligible for registration, in the form of musical notation.
Can a mark acquire distinctiveness through use?
Yes, a mark can acquire distinctiveness through use.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
Registration can be refused on absolute grounds – which are examined ex officio during the registration procedure – for:
- signs that are not distinctive;
- signs that cannot be represented graphically;
- signs that are descriptive;
- signs that are customary in the normal language or in common trade for the products or services for which the application is made;
- shapes that:
- result from the nature of the goods themselves;
- give a substantial value to the goods; and
- are necessary to obtain a technical result;
- signs that are immoral or contrary to public order;
- signs that consist of a flag or emblem protected under the Paris Convention; and
- signs that are of such a nature as to deceive the public (eg, with regard to the nature, quality or geographical origin of the goods or services).
During the application, the Benelux Organisation for Intellectual Property will not check whether the mark violates any previously registered trademarks or whether there are other related grounds for refusal. Such relative grounds may be invoked by any applicant or owner of an earlier trademark and the registration of the disputed trademark may consequently be refused further to an opposition proceeding.
Are collective and certification marks registrable? If so, under what conditions?
Collective trademarks are registrable. Under Benelux law, a collective trademark is a sign which serves to distinguish one or more common characteristics of goods or services offered by several enterprises.
The filing of a collective trademark must be accompanied by regulations for use and control.
The holder may not use the trademark for goods or services originating from its own undertaking or from an undertaking in whose management or supervision it is directly or indirectly involved.
Such a trademark does not entitle the holder to prohibit a third party from using such signs in the course of trade, provided that they are used in accordance with honest practices in industrial or commercial matters.
Other than as mentioned above, individual and collective marks are subject to the same rules.
Certification trademarks Certification trademarks are not provided for under Benelux law, although Benelux collective trademarks may serve the same purpose.
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