Registration and useOwnership of marks
Who may apply for registration?
Any individual or legal entity.Scope of trademark
What may and may not be protected and registered as a trademark?
Any names, drawings, imprints, stamps, letters, numerals, multimedia signs, holograms, sounds, shapes of goods or packaging and any other signs can be registered as trademarks as long as they can:
- be represented in the trademark register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to their proprietor; and
- distinguish the goods or services of an undertaking.
However, signs consisting solely of a shape, colour, smell and sound or any other characteristic that 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 names under which products or services are put on the market;
- figurative marks – logos, labels and (for example) words in a special font or which are presented in a special layout;
- figurative marks with word elements – their registration offers protection for the sign as a whole;
- shape marks – in certain cases, the 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 by CampingGaz);
- sound marks – advertising jingles are sometimes so well known that the public immediately recognises what they refer to on hearing them. In such cases, the relevant sound may be regarded as a mark and eligible for registration, in the form of musical notation;
- pattern marks – trademarks consisting exclusively of a set of elements that are repeated regularly (in a pattern);
- position marks – trademarks consisting of the specific way in which the sign is placed on or affixed to a product; and
- motion marks – trademarks consisting of, or extending to, a movement or a change in the position of the elements of the mark.
Collective and certification marks also exist under Benelux law.
A collective mark is a mark used by members of an association. The association is the owner of the collective mark and the mark is used to show that the products or services bearing it are provided by a member of the association. Typically, it is the type of trademark that associations of producers use – for example, a group of farmers from a particular region. A collective mark may serve as an indicator of geographical origin.
Under the Benelux Convention on Intellectual Property (BCIP), certification marks are signs capable of distinguishing, from other goods and services, goods or services that are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.Unregistered trademarks
Can trademark rights be established without registration?
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.
In addition, Article 2.2bis§2 of the BCIP stipulates that a trademark cannot be registered in bad faith in the Benelux territory.
Foreign trademark registrations may find some protection in the Benelux under such provision.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
Yes, a well-known trademark is afforded protection if it is well known by the relevant public throughout a substantial part of the Benelux territory. 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 that is likely to create confusion, and entitles the owner to act in case of infringement. In addition, the person invoking this right should 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.
A trademark with a reputation also enjoys protection as the owner can oppose the registration and prohibit the use of a later similar Benelux trademark for both similar and dissimilar goods or services if the later mark takes unfair advantage of, or is detrimental to, the distinctive character of the earlier trademark.The benefits of registration
What are the benefits of registration?
Registration offers the following benefits:
- It increases remedies for infringement;
- It gives access to specialised courts; and
- It gives access to border enforcement mechanisms against unauthorised goods.
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
An application for registration of a Benelux trademark can be filed in Dutch, French or English. The application should contain the following:
- the applicant’s name and address (if the applicant is a corporate body, its legal form should also be indicated);
- where appropriate, the agent’s name and address in the European Economic Area;
- the representation of the trademark in a manner that enables the competent authorities and the public to determine precisely and clearly the sign enjoying the protection;
- the list of goods and services that the trademark is intended to cover, including – as far as possible – the numbers and classes of these goods and services in accordance with the Nice Classification;
- an indication of whether the trademark is a verbal trademark, figurative trademark (including a good-quality image in jpeg format), semi-figurative trademark, form trademark or any other type of trademark (in which case, the type of trademark should be specified);
- an indication in words of the colour or colours of the mark, accompanied by the corresponding colour code where appropriate; and
- the (electronic) signature of the applicant or the applicant’s agent.
Trademark attorneys or law firms filing on behalf of trademark owners do not have to provide a power of attorney.
A description (in 50 words or less) of the distinctive elements of the trademark may also be included in the application.
Electronic filing is available and recommended.
Before filing the application, the applicant can search (free of charge) in the trademark register for all trademark applications and registrations that are valid in the Benelux territory. The applicant can thus check whether a mark is available. However, as this search is limited, it is advisable to conduct (with the assistance of a law firm or trademark agent) a complete search of prior registrations for signs that are identical or similar to the sign that the applicant seeks to register.
Searches are not mandatory, but are recommended in order to better assess the availability of the sign concerned.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
In general, it takes about three months for a trademark application to proceed to registration. Indeed, the exclusive right to a trademark comes into effect once the Benelux Office for Intellectual Property (BOIP) has registered the application. Before this, the trademark application must be published on the BOIP register for two months. The application is published only when the filing date has been determined and the goods and services have been correctly classified. The filing date is set as the date on which the minimal requirements have been fulfilled. The filing date is important for determining priority in regard to the applied-for trademark and the rights of any third party.
A trademark registration may take considerably longer if a third party opposes the application, if the BOIP provisionally refuses the trademark registration on absolute grounds or if some minimal requirements are missing in the application. The delay will then depend on the issue at stake and the behaviour of the parties involved.
In case of emergency, accelerated registration is available upon payment of an extra fee. In the event of an accelerated registration, the trademark will be registered as soon as the formal requirements have been met. This procedure can be completed within a few days.
Regarding the fees, a basic registration fee applies for one class (€244) and an additional fee will be added for each extra class of goods or services (€27 for the second class and €81 for each class from the third class). An accelerated registration of a trademark incurs an extra fee of €196 (in addition to the basic €244 fee), €21 for the second class and €63 per class from the third class. A basic fee of €379 applies for certification or collective trademarks and an additional tax will be added for each extra class of goods or services (€42 for the second class and €126 for each class from the third class).Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
The BOIP follows the international standard of the Nice classification system, which has a total of 45 categories (classes). A trademark application may be filed in multiple classes before the BOIP. However, supplementary fees apply for trademark registrations covering more than one class.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The BOIP assesses the following factors during the examination of the application:
- whether the documents provided by the applicant meet the filing requirements. The BOIP must ensure that the documents meet the conditions specified for setting the filing date. If any information is missing, the BOIP will inform the applicant without delay and in writing of the grounds for not setting a filing date and of the missing information;
- whether the applicant has paid the basic filing fees within one month of submission of the required documents; and
- absolute grounds of refusal – including the following grounds, which the BOIP examines ex officio:
- signs that cannot be represented in the register in a manner that enables the competent authorities and the public to determine precisely and clearly the sign enjoying the protection and distinguish the goods or services of an undertaking;
- signs that are not distinctive;
- signs that are descriptive;
- signs that are usual in the normal language or in common trade for the products or services for which the application is filed;
- shapes, colours, smells and sounds or other characteristics that result from the nature of the goods themselves, are necessary to obtain a technical result, or give a substantial value to the goods;
- signs that are immoral or contrary to public order;
- signs that consist of a flag or emblem protected under the Paris Convention;
- signs excluded from registration under EU law in relation to the protection of designations of origin and geographical indications;
- signs excluded from registration under EU law in relation to the protection of traditional terms for wine;
- signs excluded from registration under EU law in relation to the protection of traditional specialties guaranteed; and
- signs consisting of a denomination of an earlier registered plant variety.
The BOIP does not check for relative grounds of refusal. Thus, it does not check whether the mark violates any previous registered trademarks or whether other grounds for refusal exist.
The applicant can take certain measures to rectify the application when the BOIP raises objections to the application in the situations outlined below.
If certain documentary requirements have not been met, the applicant will be informed without delay and in writing to this effect and will be given the opportunity to remedy the situation.
Absolute grounds of refusal
If absolute grounds of refusal exist, the BOIP will notify the applicant in writing and without undue delay of the reasons for its intention to wholly or partially refuse registration. The BOIP will allow the applicant to respond to this notification (which can be extended on request, but may not exceed six months).
If the BOIP’s objections to the registration are not resolved within this period, the registration will be wholly or partially refused. The BOIP will notify the applicant of its refusal without undue delay and in writing, stating the grounds for refusal and mentioning the legal remedies against this decision.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
Non-use of a trademark or service mark has to be claimed before registration is granted. However, under Benelux law, a trademark can be revoked for non-use if, for a continuous period of five years since its registration, it has not been put to genuine use in the Benelux territory in connection with the goods or services in respect of which it was registered, and there are no proper reasons for this. Non-use is an argument raised in opposition proceedings by the defendant and is also a ground for revocation.
Foreign registrations can be granted rights of priority under Benelux law. There are two ways to claim such priority rights:
At time of filingIf the right to priority is claimed at the time of filing, the following elements of the original application on which the right of priority is based should be disclosed:
- the application form;
- the country in which the original application was filed;
- the application date;
- the application number; and
- the applicant’s name.
If the applicant in the country of origin is not the person submitting the Benelux filing, the latter must include a document establishing its rights in the Benelux application.
Within one month of filingA right of priority may also be claimed in the month following filing by means of a special declaration submitted to the BOIP against payment of relevant fees.
The special declaration of the right of priority must contain the name, address and signature of the applicant or its agent or, where appropriate, the agent’s name and address and an indication of the trademark and the information mentioned above.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
There are no specific words or symbols used under Benelux law to indicate trademark use or registration. Such marking are therefore not mandatory and have no specific benefits under Benelux law besides the clear indication that the trademark is registered.Appealing a denied application
Is there an appeal process if the application is denied?
It is possible to lodge an appeal directly before the Benelux Court of Justice against a BOIP decision to reject an application within two months of the notification of refusal on absolute grounds.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
The applicant or owner of a prior trademark may file an opposition before the BOIP within two months of publication of an application. After registration of the trademark, it is also possible to request the cancellation of a Benelux trademark or of an international trademark designating the Benelux in an administrative procedure before the BOIP or before the Benelux Court of Justice.
Grounds for opposition
An interested party can file an opposition when:
- an application has been submitted for an identical trademark for the same products or services;
- an application has been submitted for an identical or similar trademark for the same or similar products or services, which may cause confusion in the relevant public;
- an application has been submitted for identical or similar trademark for other products or services, taking unfair advantage of or infringing the distinctiveness or the reputation of the existing trademark;
- a more recent trademark may cause confusion with a well-known mark, as referred to in Article 6bis of the Paris Convention;
- a more recent trademark is open to opposition by the owner of a protected geographical indication; or
- a more recent trademark application was filed by an agent (a representative) in his or her own name without the authorisation of his or her client (proprietor of the trademark).
Grounds for cancellation
An earlier trademark owner can start a cancellation procedure if:
- an identical trademark has been filed in respect of the same products or services;
- an identical or similar trademark has been filed for the same or similar products or services if there is a likelihood of confusion on the part of the public;
- an application has been filed for an identical or similar trademark for other products or services, taking unfair advantage of or infringing the distinctiveness or the reputation of the existing trademark; or
- a later trademark may cause confusion with a well-known trademark as referred to in Article 6bis of the Paris Convention.
Any party (not just trademark owners) can start a cancellation procedure if:
- the trademark is descriptive;
- the trademark is not distinctive;
- the trademark is misleading;
- the trademark contains a flag, coat of arms or any other official emblem of a state or an international organisation that is protected under Article 6ter of the Paris Convention;
- the trademark infringes other IP laws, such as design and patent laws. The law frames this as follows: a shape or another characteristic of a product (eg, a sound) cannot be a trademark if it is determined by the nature of the goods, gives substantial value to the goods or is necessary to obtain a technical result. In many cases, such a shape or other characteristic also lacks distinctive character;
- the trademark is contrary to public order and morality;
- the trademark has not been used normally for a period of five years;
- the trademark refers to a protected geographical indication, traditional term for wine or traditional speciality guaranteed;
- the trademark is very similar to a protected, earlier plant variety denomination;
- the trademark was applied for in bad faith; or
- the trademark application was filed by an agent (a representative) in his or her own name without the authorisation of his or her client (proprietor of the trademark).
The basic fee to lodge an opposition before the BOIP is €1,045.
The basic fee to lodge a cancellation procedure before the BOIP is €1,420.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
The term of protection of a Benelux trademark is 10 years. It is possible to renew the registration for consecutive 10-year periods. Six months before the 10-year period expires, the BOIP will notify the owner. Renewal will take place only on payment of the renewal fee. No additional documents or steps are required. The use of a trademark is not strictly necessary during the first five years after registration. After such a period, a trademark might be the subject of cancellation proceedings if it is not put to genuine use during an uninterrupted period of five years.Surrender
What is the procedure for surrendering a trademark registration?
Surrendering a trademark is a relief that can be sought before the president of a commercial court through an action for an injunction. The competent commercial court in trademark cases is determined by the address of the defendant or the place where the obligation in dispute has arisen or has been or should have been executed.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
A trademark as such cannot be protected by another IP right, but the sign that it covers can benefit from the protection granted by the Paris Convention or unfair competition law under specific conditions.
An unregistered three-dimensional (3D) trademark can benefit from the protection granted to unregistered designs under the EU Community Designs Regulation (6/2002) if it meets the conditions laid down by the regulation or through its registration under the conditions laid down by the Benelux Convention on Intellectual Property.
A word, slogan or 3D representation subject to a trademark can also be protected by copyright if the conditions for such protection are met.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
If a trademark has been violated as a result of the registration of a certain ‘.nl’ domain name, an action can be brought before any relevant court or the Dutch Foundation for the Registration of Domain Names, which is responsible for issuing ‘.nl’ domain names and for mediation regarding ‘.nl’ domain names.
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