Amendments to Benelux Convention on IP (trademarks and designs)

On 1 June 2018 two Protocols amending the Benelux Convention on Intellectual Property (“BCIP”) shall enter into force.

NEW: Benelux Court of Justice as appeal court

The first Protocol stipulates that the Second Chamber of the Benelux Court of Justice will be exclusively competent to handle all appeals against decisions of the Benelux Office for Intellectual Property (“BOIP”) in opposition proceedings and in cases regarding the refusal of a Benelux trade mark.

Such appeals are currently handled by three different courts in the three Benelux countries. The centralisation of appeals aims to uniform case law, save time and limit procedural costs.

The Second Chamber of the Benelux Court of Justice will comprise of judges from all three Benelux countries. For the Netherlands, it concerns two judges of the Court of Appeal in The Hague.

NEW: additional ground for opposition

The second Protocol amending the BCIP contains a new ground for opposition in the Benelux. As of 1 June 2018 it will be possible to file opposition against similar trade marks filed for goods or services that are not similar, based on a trade mark that enjoys a reputation in the Benelux, when use without due cause of the later mark would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier trade mark.

So far, it has only been possible to base an opposition on the grounds of likelihood of confusion.

NEW: revocation and invalidity actions before BOIP

The amendments in the second Protocol will also make it possible (at any given time) to apply for the invalidity or the revocation of a Benelux trade mark in an office action before the BOIP. Invalidity may be claimed on absolute grounds (in particular due to lack of distinctive character) and on relative grounds due to similarity with an earlier trade mark. Revocation of a Benelux trade mark can be claimed in cases of non-use.

Decisions of the BOIP can be appealed to the Second Chamber of the Benelux Court of Justice.

These new procedures will co-exist with the possibility to go to national courts in the Benelux to apply for the invalidity or to revoke a trade mark. So far, going to a national court was the only possibility to have a Benelux trade mark invalidated or revoked.

These new administrative proceedings will give parties a much more cost effective tool to attack Benelux trade marks. On the other hand it will probably open up trade mark owners to more office actions against their marks.