On 1 June 2018, two important amendments to the Benelux trademark law entered into force. The first concerns the possibility for trademark owners to challenge the validity of registered trademarks out of court. The second amendment concerns the possibility to oppose the registration of a younger trademark for non-similar goods or services. The amendments are briefly explained below.
Administrative cancellation procedure outside the courts
As of 1 June 2018, it is possible for owners of older trademarks or other interested parties to request the cancellation of a Benelux trademark before the Benelux Office for Intellectual Property (BOIP). To this end, new administrative procedures have been put in place at the BOIP, namely the revocation action and the cancellation action.
A revocation action may by requested on absolute grounds, for example if the mark does not satisfy the requirement of distinctive character, or on relative grounds, in the case of similarity with an earlier mark. A cancellation action can be filed when a trademark is not genuinely used. If a trademark is not used for the registered goods and services for a period of five consecutive years, it can be declared invalid.
The above means that administrative proceedings are now open to interested parties, and that court actions are no longer required, although this possibility will continue to exist. The actual, preferred route to take will depend on the circumstances of the case in question. Our trademark specialists will be pleased to advise on this subject.
Additional possibilities for well-known brands in oppositions
As of 1 June 2018, it is also possible for owners of well-known trademarks to oppose the registration of similar trademarks for non-similar goods or services with the BOIP, provided that use of these similar trademarks without due cause would take unfair advantage of, or would be detrimental to the distinctive character or the repute of the respective prior, well-known trademark. Previously, trademark owners of well-known trademarks could only act in opposition proceedings on grounds of likelihood of confusion.
If you have any questions about these amendments, please feel free to contact any of our trademark attorneys.