Trade Mark Opposition proceedings in the Benelux – new guidelines

A trade mark is not registered lightly. To be eligible for registration, a trade mark must not only have distinctive character, it must also not conflict with an earlier trade mark. In order to provide trade mark owners with a means of defense against later filed identical or similar trade marks, the Benelux Office for Intellectual Property (“BOIP”) introduced opposition proceedings in 2004. Simultaneously with the introduction of these proceedings, the BOIP published its Guidelines for Opposition Proceedings (“Guidelines”). Recently, the BOIP has updated its Guidelines. The most prominent changes will be discussed below.

Background

As mentioned, the first version of the Guidelines was produced shortly after introduction of the opposition proceedings themselves in 2004. At the time, BOIP only had limited experience with the new proceedings, and there were all kinds of transition provisions in place that impacted on the proceedings. Under these circumstances, the Guidelines had a very procedural character. Now, nearly 20 years later, BOIP has a vast experience with the proceedings and rendered almost 2500 decisions, and due to significant changes that came along with the introduction of the Trade Mark Package, the time had come for the Guidelines to be completely revised. 

Contents

The Guidelines comprise four parts: 

• Part I contains all the relevant provisions from the Benelux Convention on Intellectual Property and the implementing regulations;  
• Part II contains detailed explanation of the entire procedure from beginning to end, with a separate section for each stage of the proceedings;
• Part III contains a brief chronological summary of the proceedings;
• Part IV deals with legal grounds and substantive aspects, including the new grounds for opposition introduced as a result of the Trade Mark Package. This part contains the most notable changes and is discussed below in more detail.

Part IV - legal details in more detail

In the Benelux, the most frequently seen basis for opposition by far is opposition based on an earlier registered trade mark. The new section deals successively with the legal grounds the opponent may invoke in their arguments: (i) double identity, (ii) likelihood of confusion with identical or similar trade marks and goods or services and (iii) taking unfair advantage of, or being detrimental to, the distinctive character or the repute of an earlier trade mark with an existing reputation. 

In case an opposition is based on an earlier registered trade mark that has been registered for more than 5 years, the opponent must submit proof of genuine use if the defendant requests it. This is an important means of defense and not surprisingly the criteria applicable to it are also discussed in the new Guidelines.

The new Guidelines also deal with an opposition based on a (non-registered) well-known trade mark within the meaning of Article 6bis of the Paris Convention. The Guidelines focus in particular on the difference between this ground and invoking the repute or notoriety of an earlier registered trade mark as explained above.

As stated before, the Guidelines introduce two new opposition grounds: filing an opposition directed against an unauthorised filing by an agent or representative of the owner of an earlier trade mark (normally protected outside the Benelux) and opposition based on a protected designation of origin or geographical indication. These grounds do not arise often and case law is scare, but the Guidelines nevertheless discuss the applicable criteria of these two opposition grounds.

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