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Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Agents or law firms filing on behalf of the owner need not provide a power of attorney, although doing so is recommended.
What information and documentation must be submitted in a trademark registration application?
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 trademark;
- the list of goods and services which 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 that the trademark is a verbal trademark, figurative trademark (including a good-quality image in .jpg 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 signature of the applicant or the applicant’s agent.
What rules govern the representation of the mark in the application?
The mark must be represented graphically in the application. The application should also contain:
- an indication that the trademark is a verbal trademark, figurative trademark (including a good-quality image in .jpg format), semi-figurative trademark, form trademark or any other type of trademark (in which case the type of trademark should be specified); and
- an indication in words of the colour or colours of the mark, accompanied by the corresponding colour code where appropriate.
A description (in 50 words or less) of the distinctive elements of the trademark may also be included in the application.
Are multi-class applications allowed?
A trademark application may be filed in multiple classes (under the Nice classification). However, supplementary fees apply for trademark registrations covering more than three classes.
Is electronic filing available?
Electronic filing is available in the Benelux.
What are the application fees?
A standard trademark application (up to three classes) filed with the Benelux Organisation for Intellectual Property (BOIP) incurs a €240 fee when filed online (€276 for hard-copy applications). A supplementary fee applies for each class beyond the third class (€37 for online applications and €42 for hard-copy applications) and for accelerated registration (€193 for online applications and €221 for hard-copy applications).
How are priority rights claimed?
There are two ways to claim priority rights, depending on when priority is claimed.
At time of filing If 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.
If any of these elements is missing, the BOIP will notify the applicant, which will have one month to remedy the deficiencies. This timeframe may be extended ex officio or on request, but may not exceed six months from the date on which the first notification was sent.
Within one month of filing A 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.
If any of these elements is missing, the BOIP will notify the applicant, which will have one month to remedy the deficiencies. This timeframe may be extended ex officio or on request, but may not exceed six months from the date on which the first notification was sent. Failure to respond within this timeframe will cause the right of priority to lapse.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
A trademark search before filing is not mandatory, but is recommended in order to better assess the availability of the sign concerned.
There are two ways to conduct searches on the availability of a trademark (prior registrations) in the Benelux.
Independent search Before filing the application, the applicant can search (free of charge) the trademark register for all trademark applications and registrations that are valid in the Benelux territory. It can therefore check whether a mark is available. However, 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.
BOIP search service The BOIP offers a search service for prior registrations. On the applicant’s request, the BOIP will send the applicant (within three weeks of the request) a list of all trademarks that may conflict with the applicant’s mark. The applicant will receive an examination report compiled using certain search criteria for word and image elements. This search report will give an indication of possible conflicts, but should be reviewed by a specialist to clarify the matter.
The basic search fee for applications comprising up to three classes is €150. A supplementary fee of €20 applies for each class after the third class.
What factors does the authority consider in its examination of the application?
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 checks to ensure that the documents meet the conditions specified for fixing the filing date. If any information is missing, the BOIP will inform the applicant without delay and in writing of the grounds for not fixing 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 – the BOIP will refuse to register a trademark if it:
- is not distinctive;
- cannot be represented graphically;
- is descriptive;
- is customary in the normal language or in common trade for the products or services for which the application is made;
- comprises a shapes that results from the nature of the goods themselves, gives substantial value to the goods and is necessary to obtain a technical result;
- is immoral or contrary to public order;
- consists of a flag or emblem protected under the Paris Convention; or
- is of such a nature as to deceive the public (eg, with regard to the nature, quality or geographical origin of the goods or services).
Does the authority check for relative grounds for refusal (eg, through searches)?
The BOIP does not check for relative grounds of refusal. Thus, it does not check whether the mark violates any previous registered trademarks or other grounds for refusal exist. However, if the applicant does not conduct a trademark search before filing, it will run the risk of facing a challenge by the owner of prior registered trademark that is identical or similar to its own mark.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
The applicant can take certain measures to rectify the application when the BOIP raises objections to the application in the following situations.
Missing documents 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 one month 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.
Can rejected applications be appealed? If so, what procedures apply?
Within two months of the notification of refusal on absolute grounds, the applicant may lodge a request with the Brussels Court of Appeal, the Hague Court of Appeal or the Luxembourg Court of Appeal for an order to register the trademark.
The court with territorial jurisdiction will be determined by the address of the applicant or its representative, or by the correspondence address indicated in the application. If neither the applicant nor its representative has an address or correspondence address in the Benelux territory, the competent court will be that chosen by the applicant.
The common procedure referred to in the respective judicial codes will apply.
The appeal court’s decision will be open to referral to a Supreme Court, which will have suspensive effect.
When does a trademark registration formally come into effect?
The exclusive right to a trademark comes into effect once the 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 at 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 a third party.
What is the term of protection and how can a registration be renewed?
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.
What registration fees apply?
The following application fees apply:
- basic fee for individual trademark, up to three classes – €240 (online)/€276 (hard copy);
- basic fee for collective trademark, up to three classes – €373 (online)/€428 (hard copy);
- supplementary fee for each class after third class – €37 (online)/€42 (hard copy);
- supplementary fee for accelerated registration, up to three classes – €193 (online)/€221 (hard copy);
- supplementary fee for accelerated registration, each class after third class – €30 (online)/€34 (hard copy);
- supplementary fee for description of distinctive features – €39 (online)/€44 (hard copy); and
- registration of declaration of priority rights – €15 (hard copy).
The following renewal fees apply:
- basic fee for individual trademark, up to three classes – €260 (online);
- basic fee for collective trademark, up to three classes – €474 (online);
- supplementary fee for each class after third class – €46 (online); and
- supplementary fee, payment during grace period – €129 (online).
What is the usual timeframe from filing to registration?
The procedure for definitive trademark registration takes at least three months in principle. However, if an opposition is filed against the application or it is provisionally refused on absolute grounds, the procedure can last much longer, depending on the issue at stake and the behaviour of the parties involved.
In case of emergency, accelerated registration is available on payment of an extra fee. In the event of an accelerated registration, the trademark will be registered as soon as the formalities have been fulfilled. This procedure can be completed within a few days.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Third parties can oppose an application.
Grounds The applicant or owner of a prior trademark may file an opposition before the BOIP within two months of publication of an application for a trademark which:
- in order of priority, ranks after its own (not applicable to trademarks with a reputation for dissimilar goods or services); or
- may give rise to confusion with its well-known trademark, as per Article 6bis of the Paris Convention.
The opposition may be based on one or more prior trademarks.
Procedure The following opposition procedure applies:
- An opposition is lodged on the basis of a document containing:
- the claimant’s name;
- where appropriate, a statement that the claimant is acting as the licensee of the prior trademark;
- references identifying the prior trademark registration(s) or application(s);
- the goods or services of the prior trademark invoked and on which the objection is based;
- the trademark against which an objection has been lodged;
- the goods or services against which the objection has been lodged; and
- preferences concerning languages used.
- The opposition is admitted if at least 40% of the due fees have been paid.
- The BOIP decides whether to admit the opposition and informs the parties accordingly.
- Once the opposition has been admitted, the parties are given two months to decide whether they can resolve their dispute by way of an amicable arrangement (ie, a cooling-off period). This period may be extended by four months at the joint request of the parties and can be extended by the same period each time. During a suspension period requested jointly by the parties, any party may request the end of the suspension at any time.
- The BOIP informs both parties when the cooling-off period has ended. This constitutes the formal start of the proceedings. The claimant is given two months from the beginning of the proceedings to substantiate the objection with supporting arguments and documents.
- The BOIP sends the claimant’s arguments to the defendant, which has two months to respond in writing and/or request proof of use.
- If the defendant does not file its arguments but requests proof of use, the claimant is given two months to produce proof of use or provide valid grounds for non-use.
- If proof of use is produced, the BOIP forwards it to the defendant, which has two months to respond.
- If justified, the BOIP may ask one or more parties to submit additional arguments.
- Once all documents have been submitted, the file is ready to be decided.
What is the usual timeframe for opposition proceedings?
Oppositions must be filed within two months of the trademark application’s publication date. Once the BOIP admits the opposition, proceedings can last from one to two years, depending on possible regularisations, suspension periods, discussions on the language of the procedure, requested proof of use and the behaviour of the parties.
Are opposition decisions subject to appeal? If so, what procedures apply?
Opposition decisions can be appealed within two months of issuance. The parties may lodge an appeal before the Brussels Court of Appeal, the Hague Court of Appeal or the Luxembourg Court of Appeal in order to obtain the cancellation of the BOIP’s decision.
The common procedure provided for in the respective judicial codes will apply.
The decision of the appeal court will be open to referral to a Supreme Court, which will have suspensive effect.
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