Introduction

On 1 June 2018 the long-awaited amendments to the Benelux Convention on Intellectual Property (BCIP) entered into force. Three aspects deserve particular attention, as they affect the Benelux trademark environment for both trademark owners and lawyers.

First, the BCIP offers broader protection to reputed trademarks in opposition proceedings. Second, an administrative procedure for invalidation and revocation before the Benelux Office for Intellectual Property (BOIP) is now available. Third, the Benelux Court of Justice has become the sole jurisdiction for appeals against BOIP decisions.

New legal ground for opposition based on reputed trademarks

Besides the opposition based on double identity and likelihood of confusion, Article 2.3.c of the BCIP now gives owners of senior trademarks with a reputation the right to oppose junior trademark applications. In the past, the legislature took the view that:

  • this opposition ground involved inter partes burden of proof issues that were too complex for the BOIP to examine; and
  • the courts were therefore better qualified to deal with such conflicts.

Now the legislature has accepted that owners of reputed trademarks contribute to keeping trademark registers 'clean'. Therefore, the BOIP's competence is now extended to all conflicts between trademarks.

New administrative procedures for invalidation and revocation before BOIP

Until 1 June 2018, only the national courts were competent to decide on invalidity and revocation actions against Benelux trademarks. As of 1 June 2018, the BOIP also rules on such actions. The new procedures before the BOIP offer an alternative route to judicial proceedings for the invalidity or revocation of trademarks.

These administrative procedures are intended to fulfil multiple purposes.

First, they allow trademark owners to initiate invalidity or revocation claims at an administrative, extra-judicial level, which aligns the BCIP with the EU Trademark Directive (2015/2436/EC) and harmonises the options for trademark owners before the BOIP with those at the European Union Intellectual Property Office level.

Second, the new administrative procedures lower the threshold for trademark proprietors to initiate claims. For example, a trademark proprietor that is too late to initiate opposition at an administrative level can still challenge a conflicting opposition through administrative cancellation proceedings before the BOIP.

These cancellation proceedings operate under the same principles as the existing opposition proceedings regarding both their procedural aspects and grounds for invalidity and revocation. Particular aspects worth noting include:

  • Costs: there is a €1,400 fee for invalidity or revocation claims and an additional fee of €140 must be paid per ground or right invoked above the third claim.
  • Language: if the parties do not agree on the procedural language, it will be determined by the defendant's Benelux trademark registration. If an action is based on an international registration, the claimant chooses one of the BOIP's working languages (ie, Dutch, French or German).
  • Suspension: the procedure may be suspended in some cases. For example, the parties can agree to suspend the proceedings for four months to reach an amicable solution. The proceedings can also be suspended if the trademark is the subject of court proceedings or when there are invalidity or revocation proceedings pending before the national courts.
  • Closing: the proceedings will be automatically terminated if the defendant does not respond to the claim. In such a case, the defendant will be considered to have waived its rights regarding the trademark registration.

Although it is too early to evaluate the BOIP's workload, the invalidity and revocation procedures should normally lead to a BOIP decision within approximately 12 months from the claim's initiation.

Extension of Benelux Court of Justice's jurisdiction

Previously, only the Brussels Court of Appeal, the Luxembourg Court of Appeal and The Hague Court of Appeal had jurisdiction to handle appeals against the BOIP's final decisions on refusal of a trademark or on an opposition or cancellation. Before 1 June 2018, the Benelux Court of Justice had jurisdiction to interpret only issues of Benelux legislation, which in practice had become limited, as nearly all questions regarding substantive trademark law are now referred to the European Court of Justice.

The extension of the Benelux Court of Justice's jurisdiction has been driven by the need for uniformity and legal certainty in Benelux trademark law. Indeed, a BOIP report highlighted that the Brussels Court of Appeal generally has taken three times longer to deliver a decision than its Dutch counterpart. Moreover, final BOIP decisions were four times more likely to be altered on appeal to the Brussels Court of Appeal than before The Hague Court of Appeal. With one court now competent to rule on appeal, such unwarranted discrepancies should be a thing of the past.

The Benelux Court of Justice will group judges from the Benelux countries with significant trademark litigation experience, which will undoubtedly lead to more legal certainty and homogeneous case law.

The proceedings before the Benelux Court of Justice are initiated through filing a petition with the court's registry in Brussels within two months from the BOIP's final decision. These proceedings are usually written proceedings; however, oral pleadings are possible where the court deems this appropriate.

Appeals against the Benelux Court of Justice's judgments will have to be lodged within two months before another chamber of the court. However, such appeals are limited to questions of law.

For further information on this topic please contact Paul Maeyaert or Andreas Reygaert at ALTIUS by telephone (+32 2 426 1414) or email (paul.maeyaert@altius.com or andreas.reygaert@altius.com). The ALTIUS website can be accessed at www.altius.com.

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