The amendments to the Benelux trade mark law are just around the corner. On 1 June 2018 the changes will enter into force and will add new tools to the toolbox of Benelux trade mark owners, whilst also opening the door to easier attacks on existing trade mark registrations.
New administrative proceedings introduced at the Benelux Office for Intellectual Property (BOIP) and the enhanced possibilities for trademarks with a reputation
Opposition proceedings in the Benelux will be extended to allow for oppositions to be brought on the basis of the dilution of a trade mark with reputation. Further, it is currently only possible to bring an opposition against identical trade marks filed for identical goods and/or services, and trade mark applications filed for similar goods and/or services as the opponent’s trade mark, where there is a risk of confusion. However, as of 1 June 2018, trade mark owners will be able to file an opposition before the BOIP based on a “similar trade mark, for non-similar goods or services, that takes unfair advantage of or is detrimental to the distinctive character or repute of an earlier mark that enjoys a reputation in the Benelux territory”, making it easier for owners of an earlier mark to act quickly against free-riding. It is worth mentioning that the BOIP will be able to base its decisions in these cases on dilution of a trade mark’s reputation rather than confusion, which for owners of trade marks with a reputation is an important addition to their armoury.
Another important change is the introduction of new administrative proceedings at the BOIP. For example, as of 1 June 2018, the invalidation and revocation of a trade mark registration can be requested in administrative proceedings before the BOIP, where a trade mark can be invalidated due to lack of distinctiveness or because of a conflict with an earlier mark. Moreover, revocation can be requested on the basis of non-use. This also applies when the requested invalidation or revocation concerns an international filing that designates the Benelux. Of course it still remains possible for a party to turn to the competent national court instead.
It is expected that these new administrative proceedings will result in lower costs and that the proceedings will be more time efficient. Looking at this from a Dutch perspective this underlying thought makes sense. However, in IP proceedings before Dutch courts the winning party can claim the full (fair and reasonable) costs of the proceedings if the cancellation or revocation is connected to (a threat of) infringement of its rights by the opposite party. This option does not exist in proceedings at the BOIP and only very limited costs are compensated, which can be a downside for the winning party.
Centralisation of appeals
Currently, appeals against decisions of the BOIP are filed at the Court of Appeal in Brussel, Luxembourg or The Hague. Starting this June, the Second Chamber of the Benelux Court of Justice, consisting of specialized national judges, will act as the centralised appellate court for almost all final decisions of the BOIP. These final decisions include the refusal to register a trade mark, a decision in opposition proceedings and decisions in the new administrative proceedings mentioned above. Due to this centralisation, the Second Chamber of the Benelux Court of Justice will get to decide whether there is a likelihood of confusion between trade marks. Hopefully this will lead to more uniformity in the judgments moving forwards.
The discussed amendments are welcomed but still leave some gaps, for example, when it comes to trade mark owners that are affected by trade marks that have been filed in bad faith by so-called “trade mark trolls”. In short, trade mark trolls usually register well-known trademarks in several countries and either demand money or threaten to start proceedings. In those cases, the trade mark owner can argue that the registration by the trade mark troll was made in bad faith and thus request the invalidation of the trade mark. For now this is only possible if the action is brought before one of the competent national courts, since the trade mark owner cannot rely on bad faith in opposition or administrative proceedings before the BOIP. This will change when the new Trade Mark Directive (2015/2436) is implemented in to Benelux trade mark law, which will hopefully take place by 14 January 2019. One of the amendments is that bad faith will be an absolute ground for refusal. This means that the trade mark owner will be able to request the invalidation of a trade mark based on bad faith in administrative proceedings before the BOIP.
If the practicalities of the administrative proceedings based on non-use are similar to the cancellation proceedings at the European Union Intellectual Property Office then initiating the action will only require a single form which significantly lowers the administrative burden for the party bringing the action. However, at the same time poses a risk for trade mark owners within the Benelux for unfounded cancellation actions to put pressure on the trade mark owner, for example as a counterattack, or even as an opportunistic challenge against trade marks that are clearly still in use. Initially, this will entail high costs for trade mark owners because the burden of proof is on them and even if it is clear that the trade mark in fact has been used, this still has to be proven. Trade mark owners should also be aware of the fact that the lower administrative burden makes it easier for a party to request the revocation of a registered trade mark that has become the common name for the goods and/or services it is registered for. Although the official fee of EUR 1400 may deter some clearly unfounded cancellation actions, it must also be kept in mind that after 1 June 2018, cancellations and revocations can be filed at the BOIP without the need for legal representation. It will therefore be more important for trade mark owners to properly document what use they make of their trade marks and save full and comprehensive evidence.
It remains to be seen how the proceedings before the BOIP will develop and whether they can compete with the national courts. However, trade mark owners will still have to consider which proceedings will be more beneficial for their situation and court proceedings might still be preferable depending on the specifics of the case.
Manon is a partner in our Intellectual Property Practice and she heads our brand management team in the Hague, the Netherlands. Manon has over 15 years of experience and has a particular focus on both contentious and non-contentious trademark, design, copyright, domain name, unfair competition and advertising law.
Sabrina is an associate in our Intellectual Property Practice and is based in The Hague. She specialises in intellectual property law, including patents, trademarks, copyrights, domain names and designs.