What is the primary legislation governing trademarks in your jurisdiction?
The registration of Benelux trademarks is governed by:
- the Benelux Convention on Intellectual Property (trademarks and designs) of February 25 2005 (as most recently amended by the Protocol of July 22 2010), which entered into force on October 1 2013; and
- the Implementing Regulation under the Benelux Convention on Intellectual Property (trademarks and designs).
Trademark protection solely for the territory of Belgium, Luxembourg or the Netherlands is unavailable; successful trademark applications filed with the Benelux office will result in protection for the entire Benelux territory. The advantage of such a system is that registrants automatically enjoy protection in at least three countries, although the risk of facing an opposition may be higher.
An EU trademark reform package was adopted on December 15 2015 (EU Directive 2015/2436) in order to harmonise the trademark laws of EU member states. Some changes to Benelux trademark law are therefore expected. However, member states have three years – and seven years for certain provisions – to transpose the directive into their national legislation.
Which international trademark agreements has your jurisdiction signed?
The following international trademark agreements, conventions, regulations and directives apply in Belgium, Luxembourg and the Netherlands:
- the Paris Convention for the Protection of Industrial Property;
- the Madrid Agreement Concerning the International Registration of Marks;
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
- the Trademark Law Treaty;
- the Agreement on Trade-Related Aspects of Intellectual Property Rights;
- the Benelux Convention on Intellectual Property;
- the Singapore Treaty on the Law of Trademarks;
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
- the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (signed by Belgium on December 10 1973, but not yet in force; signed by Luxembourg and the Netherlands and entered into force in both countries on August 9 1985);
- EU Regulation 207/2009 on the EU trademark; and
- EU Directive 2015/2436.
Which government bodies regulate trademark law?
The government body regulating Benelux trademark law is the Benelux Organisation for Intellectual Property, located in The Hague, Netherlands.
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.
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.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
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 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, but this will not automatically lead to the revocation of the trademark concerned. A specific procedure must be lodged for that purpose.
Non-use is also a ground for revocation.
A procedure for revocation can be launched before any competent commercial court as a legal action or counterclaim.
The territorial jurisdiction of the courts, unless expressly stated in a contract, will be 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. Under no circumstances will the place where the trademark is filed or registered be used as the sole basis for determining territorial jurisdiction.
Revocation can also be requested before the president of a commercial court when injunction proceedings are launched before him or her. He or she can also declare such revocation ex officio on finding that the trademark registration is void or invalid.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
The rights of the owner of a trademark can be revoked by a court in the following cases:
- There is no genuine use of the trademark in the five years following its registration. Moreover, use must not be interrupted for more than five years;
- The trademark has become generic as a consequence of the acts of the owner and in the absence of sufficient measures taken by the owner to prevent this; and
- As a consequence of its use by the owner, the trademark has become misleading as to the nature, quality or geographical origin of the goods and services for which it is registered.
The courts may declare a trademark invalid on absolute grounds in the following cases:
- The mark was registered despite the existence of an absolute ground for refusal (in particular, if it was non-distinctive); and
- The applicant acted in bad faith in filing the application.
The courts may declare a trademark invalid or null on relative grounds (ie, earlier trademark rights) in the following cases:
- Prior identical marks exist for identical goods;
- Prior identical or similar marks exist for identical or similar goods, if an association between the marks can be created in the view of the public; and
- Prior registered marks exist for non-similar goods which are known in the Benelux territory if, without a valid reason, use of the later mark could create an unjustified benefit based on the distinctive power or reputation of the prior mark, or could detract from such distinctive power or reputation.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any party with an interest in claiming revocation or nullity may file a request for revocation or nullity.
There is no specific statute of limitations for filing revocation and nullity requests. However, the court may decide that a trademark has acquired a distinctive character after registration as a result of the use which has been made of it. Therefore, even if the trademark was descriptive at the time of filing, it can gain distinctiveness through use over time.
What are the evidentiary and procedural requirements for revocation proceedings?
The party seeking revocation should have an interest in claiming such revocation.
Depending on the grounds for revocation, the trademark owner will have to prove the use of the trademark for an uninterrupted period of five years following registration or that the trademark has not become generic or misleading.
What is the appeal procedure for cancellations or revocations?
The appeal procedure can be lodged before the appeal court of the court that rendered the first-instance cancellation or revocation judgment.
The appeal must be lodged within one month of the judgment’s issuance date, although this deadline may be extended for foreign companies.
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.
Which courts are empowered to hear trademark disputes?
The president of a commercial court is empowered to hear injunction proceedings in Belgium and the Netherlands. In Luxembourg, injunction proceedings are heard by the President of the District Court, as there are no specific separate commercial courts in Luxembourg.
Proceedings on the merits are heard by commercial courts or even criminal courts (or district courts in Luxembourg), where a criminal complaint has been filed and an application has been made to join proceedings as a civil party.
Territorial competence The territorial jurisdiction of the courts hearing trademark cases, unless expressly stated in a contract, will be determined by:
- the address of the defendant;
- the place where the obligation has been or should have been executed; or
- the place where the infringement in dispute has arisen.
Where these criteria are insufficient to determine territorial jurisdiction, the petitioner owner of a Benelux trademark may bring the case before the competent court of its address for service or residential address; if the owner has no address for service or residential address in the Benelux territory, it may choose the competent court, be it Brussels, The Hague or Luxembourg.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Various civil actions can be taken in the Benelux against trademark infringement.
There are no Benelux courts at first instance and appeal. It will therefore be necessary to bring civil actions before the national courts of Belgium, Luxembourg or the Netherlands, depending on the issues at stake.
The primary civil actions are as follows.
Description seizure The so-called ‘description seizure’ (usually referred to as ‘evidentiary seizure’ in the Netherlands) is a unilateral procedure specific to intellectual property. The purpose of this procedure is to obtain evidence of the existence and extent of IP rights infringement. The procedure is initiated before the president of a commercial court (or before the president of the district court in Luxembourg) by a unilateral application (ie, without hearing the other party to maintain the effect of surprise). The president of the relevant commercial court will then appoint an expert who will be entitled to enter the premises of the supposed infringer and seize any items that may prove the infringement.
Two main conditions must be met in order to obtain an order for a description seizure:
- The applicant must have an apparently valid IP right; and
- There must be a serious and concrete suspicion of infringement or a threat of infringement of the IP rights at stake. Therefore, the request must be very specific; ‘fishing expeditions’ are not allowed.
In Belgium, the plaintiff will be asked to post a deposit in order to guarantee compensation for any damage suffered by the defendant, in particular if seizure of the alleged infringing items is sought. In the Netherlands, there is no such deposit requirement. In Luxembourg, this is a possibility that can be ordered by the president of the district court, but which is never done in practice.
Following the ordering of a description seizure and once the expert report has been delivered, the plaintiff must act on the merits of the case within the timeframe prescribed in the order or within a maximum period of 31 days.
Injunction action on the merits In Belgium, the plaintiff may also request an injunction from the president of the commercial court to order the cessation of the trademark infringement. This is the most commonly used procedure for IP disputes in Belgium. The advantage of this action is that the judgment rendered will not be provisional, but will settle the substance of the dispute. Injunctions are ordered under penalty. This is an effective way to oblige the defendant to immediately stop the infringement. The president of the court can take ancillary measures in addition to his or her injunction (eg, publishing the sentence or ordering the destruction of counterfeit goods). However, the jurisdiction of the president of the court is limited. For example, he or she cannot rule on the question of compensation for damages suffered.
In the Netherlands, the legal figure of an injunction action on the merits is unknown. Instead, a trademark holder can claim a provisional injunction in so-called ‘summary proceedings’. These summary proceedings need to be followed up by proceedings on the merits in order to uphold the order. A court order is usually rendered within two weeks after an oral hearing is held. In very urgent matters, an order can be issued on the same day as the hearing.
In Luxembourg, there is no injunction action on the merits for trademark matters. However, the provisional cessation of an infringement can be requested in the frame of inter partes injunction proceedings brought before the president of the district court. The injunction must be followed by an action on the merits within the timeframe prescribed in the order or within one month.
Action on the merits including claim for damages The action for claiming damages is the typical action used to obtain a decision on the substance of a case. The plaintiff must prove the damage suffered. It may be difficult to assess both economic and moral damages. As such, most judges assess the damages suffered ex aequo et bono once the infringement is established.
Administrative actions – customs level Administrative actions are not harmonised at the Benelux customs level. For this reason, in order to take action, an application for action must be filed in each of the three Benelux countries.
Once an application for action is filed, the procedure provided for in EU Regulation 608/2013 will apply.
Criminal actions Criminal actions are also possible in Belgium, Luxembourg and the Netherlands.
Owners or licensees can file a criminal complaint for infringement with the Economic Inspection or the police. Both have investigatory powers. If a complaint is lodged, the Economic Inspection or the police may:
- initiate an investigation;
- request the issuance of a search warrant;
- record the offences; and
- refer the case to the public prosecutor so that it can schedule the case before a criminal court once the investigation is completed.
However, the police, the Economic Inspection and public prosecutors have wide discretionary powers and are not obliged to pursue the case of every criminal complaint. Thus, the public prosecutor may close the case if he or she considers the matter to be of limited relevance.
In order to ensure that the case is investigated, the trademark owner must file its criminal complaint before the investigation judge with a formal civil claim. In such a case in Belgium, the trademark owner will have to pay a deposit to cover the costs of the investigation. In the Netherlands, there is no deposit requirement, and in Luxembourg the president of the district court may decide whether to order it or not.
Who can file a trademark infringement action?
Any interested party and even the public prosecutor (ex officio) can file a trademark infringement action.
What is the statute of limitations for filing infringement actions?
The ordinary regime of limitation of actions applies regarding the statute of limitations for filing infringement actions. This means that the statute of limitations for filing infringement actions is 10 years from the date of the act giving rise to the claim in Belgium and Luxembourg.
In the Netherlands, a trademark owner has to file an infringement action within five years after he or she became aware of the infringement, in order not to forfeit his or her rights. In criminal proceedings, the time limit for the prosecutor to take action against trademark counterfeiting is six years as of the date of the counterfeiting.
What is the usual timeframe for infringement actions?
The usual timeframe for infringement actions is as follows:
- Description seizure – the order is pronounced within eight days of receipt of the request and the expert has two months to render its report. In the Netherlands, there are no fixed terms. The order is usually pronounced the day after filing. Subsequently, the trademark holder has the freedom to decide when to make the seizure. In some cases, a court may decide on this term (at its own discretion). After submission of this report, the plaintiff has 31 days (the law says one month in Luxembourg) to initiate an action on the merits.
- Injunction action – the judgment is generally rendered between three and eight months after initiation of the case but it can be only in the Netherlands in case of summary proceedings.
- Action on the merits including claim for damages – the timeframe for this action can range between one and two years at first instance, where there is no judicial expertise. It may take another three to four years (in the Netherlands it is one to two years, and in Luxembourg two to three years) if an appeal is lodged.
- Customs actions – these are very fast, thanks to the simplified procedure provided under EU Customs Regulation 608/2013, and generally take 10 working days.
- Criminal actions – the timeframe can be very long (approximately one to three years).
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
Injunctions and interim measures can be obtained quickly before the president of a commercial court (or the president of the district court in Luxembourg within a few weeks, or even on the same day that a writ is served in very urgent cases). The plaintiff must establish the urgency of the case and obvious infringements of its rights.
However, as this possibility exists in Belgium, most trademark owners opt for injunction proceedings on the merits because, although this may take a few more weeks, they obtain a definitive judgment on the merits and need not establish the urgency of the case.
Further, in high-urgency cases and in the event of (the threat of) irreversible damages, there is also the possibility of ex parteproceedings. This procedure, in which the trademark owner can also ask for an injunction (which will usually be rendered the day after the application is filed), is initiated before the president of a commercial court (or district court in Luxembourg), without hearing the other party.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
Owners of infringed trademarks can seek the following remedies as provided under the EU directive harmonising trademark law:
- injunctions against the infringer aimed at halting the infringement, which can be imposed under threat of a penalty in case of continued infringement;
- payment of the profits generated from the sale of the infringing goods or services;
- surrender of the infringing goods and the materials and tools used to produce them;
- recall from the market, removal from the market or destruction of the goods which infringe the mark and of the materials or tools used to produce them;
- publication of the judicial decision at the cost of the infringer; and
- an injunction to provide all information with regard to the origin and distribution channel of the infringing goods and services.
Punitive damages are not allowed in the Benelux countries.
What customs enforcement measures are available to halt the import or export of infringing goods?
Customs enforcement measures are available to halt imports or exports in Belgium, Luxembourg and the Netherlands. An application for customs action can therefore be sought in all three countries. The matter is regulated by the EU Customs Enforcement Regulation (608/2013), which provides for two types of customs action for cases of suspected counterfeiting:
- ex officio actions (approximately 3% of all cases); and
- actions based on earlier filed applications for action (approximately 97% of all cases).
Under both procedures, customs authorities detain the goods and notify the trademark owner or its representative, which must confirm the counterfeit nature of the seized goods.
If the trademark owner confirms the infringement, Customs will not release the goods and the goods will generally be immediately destroyed. If the declarant, holder or owner of the detained goods opposes the destruction, court proceedings (and in the Netherlands, prior to court proceedings, civil seizure of the goods) will need to be initiated to secure the seizure.
In the case of an ex officio action, the trademark owner has four working days to confirm the infringement. If an application for action has already been submitted, this is extended to 10 working days. This term can be extended with an additional 10 working days under certain conditions, notably in the Netherlands, if the trademark owner can demonstrate that he or she has started preparing further civil action.
Trademark owners can also ask for the name and address of the addressee and sender and take appropriate measures against them (eg, send a cease and desist letter requiring the voluntary release of the goods and the application of the simplified procedure provided for in EU Regulation 608/2013).
This simplified procedure under the EU Customs Regulation gives customs authorities the power to destroy the detained goods with no obligation for the applicant to initiate proceedings in order to have the alleged IP infringement confirmed by a court.
Significantly, under the simplified procedure, customs authorities may presume that the declarant, holder or owner of the detained goods has agreed to their destruction if it does not oppose the destruction within 10 working days of notification.
Small consignment procedure A ‘small consignment’ is defined as a “postal or express post consignment that comprises three units or less or has a gross weight of less than 2 kilograms”. Customs authorities now have the power to destroy small consignments of counterfeited goods without the need for the declarant, holder or owner thereof to give consent for each instance of destruction. Trademark owners need merely choose the small consignment procedure in their customs application form.
What defences are available to infringers?
Infringers are always allowed to be heard and defend themselves. They usually contest the fact that the product at stake infringes the relevant trademark rights, particularly on the basis of the freedom of trade principle or the invalidity of the relevant trademarks.
What is the appeal procedure for infringement decisions?
Infringers are always allowed to be heard and defend themselves. They usually contest the fact that the product at stake infringes the relevant trademark rights, particularly on the basis of the freedom of trade principle or the invalidity of the relevant trademarks.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
It is not mandatory to record the assignment in order for it to have effect between the parties. However, in order to be enforceable against third parties, the assignment must be registered and published in the Benelux Trademark Register. In such case, a mere extract of the assignment contract or a declaration signed by the parties must be submitted to the Benelux Organisation for Intellectual Property (BOIP).
The assignment covers all three Benelux countries. It is not possible to assign a trademark for only one of these countries before the BOIP.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
It is not mandatory to record a licensing agreement in order for it to have effect between the parties, but a licence is enforceable against third parties only when the following conditions are met:
- A written document establishing the licence has been filed at the BOIP;
- The status of licensee has been published in the Benelux Trademark Register; and
- The publication fees have been paid to the BOIP.
After recording, the licensee becomes entitled to act jointly with the licensor or independently, with the licensor’s permission, in cases of trademark infringement and to claim damages.
A licence can be limited to one of the Benelux countries.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
A written licensing agreement should include at least the following information in order to avoid disputes as to its content:
- the names of the parties;
- the concerned Benelux trademarks and relevant classes of goods or services;
- the territory covered (a licence can be limited to one of the Benelux countries);
- the law firm involved and its official address;
- the duration of the licence;
- the scope of use under the licence;
- whether the licence is exclusive or non-exclusive;
- the amount or percentage of royalties payable;
- the right to sub-license (if any); and
- the ability to transfer the rights and obligations of the agreement (if any).
For the purpose of the recording, a mere declaration referring to the licensing agreement which mentions only the trademarks concerned and the goods and services and territory covered, and which is signed by both parties, can be submitted to the BOIP.
Quality control is not required, but it is advisable to provide for an audit section in the licensing agreement.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
A security interest can be registered over a trademark. The same rules for licensing agreements apply. This means that the security interest is enforceable against third parties only when the following conditions are met:
- A written document establishing the security interest has been filed at the BOIP;
- The security interest has been published in the Benelux Trademark Register; and
- The relevant fees have been paid to the BOIP.
In addition to registration before the BOIP, national law may also require registration in the relevant standard national register.
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 ‘.be’ domain name, an action can be brought before any relevant court or the Belgian Centre for Arbitration and Mediation, which is the Belgian mediation service.
Netherlands 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.
Luxembourg If a trademark has been violated as a result of the registration of a certain ‘.lu’ domain name, an action can be brought before any relevant court. In the meantime, the DNS-LU, service of the RESTENA Foundation (the Luxemburg domain name registry), can be asked to block the domain name until the litigation is solved by the relevant court. The domain name is then blocked for trade but can still be used by the registrant.