Registration of marksi Inherent registrability
Any sign that is capable of distinguishing goods or services as originating from a certain company can be registered as a trademark (e.g., words, symbols, colours, three-dimensional shapes (of a product or packaging) and sounds). The BOIP may refuse registration, in particular, if the sign:
- is descriptive;
- lacks distinctive character;
- is misleading or in violation of public policy;
- is an official emblem or flag of a state or international organisation; or
- has a shape that overlaps with any other IP right, such as a patent or design right.
A sign is descriptive if, for example, it describes or recommends the product or service for which the trademark application is filed. A descriptive sign automatically lacks distinctive character. A non-descriptive trademark can also be non-distinctive; for example, where it is a slogan or a single colour. These signs may be registerable as a trademark only after having acquired distinctive character with the relevant sector of the general public through intensive use.
Usually, the BOIP issues a provisional refusal of protection within two months of the filing of the application. The applicant is granted a three-month period in which to file an appeal with the BOIP against such a refusal, which may be extended once only up to a total of six months.ii Prior rights
The BOIP does not refuse the registration of a trademark because of likelihood of confusion with earlier registrations. It is up to the holders of earlier registrations to initiate opposition proceedings before the BOIP to prevent the application from maturing into registration, or alternatively, after registration, to initiate cancellation proceedings to remove a trademark from the register.
The owner of a registered trademark that is valid in Benelux has the right to prohibit others from using a younger sign if the younger sign is:
- identical and used for identical products or services in commerce;
- identical or similar and used for identical or similar products or services, if that use may cause confusion;
- identical or similar and used for products or services different from those for which the prior trademark is registered, if the trademark has a reputation in Benelux and the use of the younger sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trademark;
- a trademark filed for dissimilar goods or services if that mark takes unfair advantage of, or is detrimental to, the reputation or distinctive character of the invoked mark, where that prior mark is well known in Benelux; or
- used for purposes other than to distinguish a product or service (i.e., not used as a trademark) if this use, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the prior trademark.
Under the BCIP, trademark owners may oppose an application for registration of a conflicting sign before the BOIP. The aim of these administrative opposition proceedings is to establish at an early stage whether the opposed application should be denied for reason of the sign applied for being confusingly similar to the opposing party’s earlier trademark registration. Furthermore, the opposition system is meant to encourage parties to reach an amicable settlement. Oppositions may be lodged against new trademarks filed for goods and services in any classes. Under Benelux trademark law, the applicant or owner of a prior trademark can file an opposition against the application for:
- an identical trademark filed for the same goods or services;
- an identical or similar trademark filed for the same or similar goods or services, where there exists a likelihood of confusion among the public; or
- a trademark that can cause confusion with an existing trademark that is well known within the meaning of Article 6 bis of the Paris Convention.
Third parties have up to two months from the publication to file an opposition to the registration. The opposition proceedings start (once found admissible by the BOIP) with a two-month cooling-off period. This cooling-off period gives the parties an opportunity to seek an amicable solution to the dispute. The cooling-off period may be extended upon mutual request. Once the proceedings start, the opponent has a two-month period to file the explanations of the grounds for the opposition, after which the applicant is given two months to file its observations in response. Also, the applicant may request proof of use of the opposing trademarks. The official fee for filing an opposition is €1,045. This fee includes an opposition based on three trademarks.iv Invalidity or revocation proceedings
Cancellation proceedings may be initiated by any interested party. This entails either proceedings before the BOIP or court proceedings on the merits, based on absolute grounds, relative grounds or nullity.
Invalidity or nullity proceedings are aimed at having the trademark against which the action is directed declared invalid or nullified. These are typically court proceedings, initiated by filing a request with the competent Dutch court to declare a trademark invalid (null and void). Following the recent implementation of the Trademark Regulation, these proceedings are now also possible before the BOIP. A nullity action can be based on one of the following reasons:
- conflict with an earlier registration;
- the trademark has not been used genuinely (non usus);
- it lacks distinctive character;
- it is too descriptive;
- it has become a common or generic term;
- it has become misleading through use; or
- the trademark was registered in bad faith.
Final decisions by the BOIP (e.g., refusals, as well as decisions in opposition, cancellation or invalidity proceedings) can be appealed at the Benelux Court of Justice. The appeal must be initiated within two months of the final decision.