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The Benelux trademark opposition procedure

In 2004, a trademark opposition procedure was introduced in Benelux. Now, 3.5 years later, a large number of opposition proceedings are pending and a number of opposition decisions have been issued.

Therefore, it is time to provide you with an overview of developments in the Benelux opposition proceedings and discuss the decisions issued.

Prior to 2004, parties could only enforce their rights against a Benelux trademark application by means of a Court case. As such cases were time-consuming and expensive, this tool was only used if all other means were exhausted and could therefore hardly serve as a pressure tool. With the introduction of the Benelux opposition procedure in January 2004, oppositions could be lodged against applications including classes 2, 20 or 27 only. In the following two years, the classes against which an opposition could be directed were gradually expanded and since 1 January 2006, an opposition can be directed against any Benelux application or against the Benelux part of any International Registration (hereafter: IR).

According to the information provided by the Benelux Office for Intellectual Property (hereafter: BOIP), over 2,000 oppositions have been filed since the introduction of the procedure in 2004. Currently, almost 1,000 oppositions are pending. So far (by 1 November 2007), 17 decisions have been issued. Taking into account these figures, over 98% of the oppositions filed were withdrawn or cancelled prior to a decision.

The Benelux opposition procedure bears the following characteristics:
1. The opposition needs to be filed within two months after the first day of the month following the publication of the application. The opposition needs to be filed on the first (working) day of said month at the latest.
2. The opposition can be based on either a prior trademark application/ registration or on a well-known mark (Article 6bis Paris Convention). It therefore cannot be based on other rights, for example trade name rights or copyrights. One of the Benelux oppositions was even rejected as the opponent based his case exclusively on copyright infringement.
3. The opponent has only one opportunity to file arguments and may be given an extra round to file proof of use. In this extra round, any additional arguments and information brought forward not explaining the evidence will not be taken into account.
4. The Benelux area deals with two official languages: Dutch and French. In principle, the language in which the application was filed will be the language of the opposition proceedings. If the opposition is directed against the Benelux part of an IR, the applicant can choose which language he prefers. Nevertheless, parties can mutually change the language of the proceedings or request that arguments be filed in English as well. The decision will however be in either Dutch or French.
5. An appeal can be filed against the decision of BOIP with one of the High Courts in either The Hague, Brussels or Luxembourg.
6. The cost decision is directly enforceable.

A study of the 17 decisions lodged so far reveals a number of interesting results.

A. It must be said that the decisions of BOIP are characterized by their clear and quite elaborate grounds. BOIP always refers to current European and Benelux case law in general and applies it to the case at hand. Over the last two years, BOIP has further streamlined the format of its decisions.
B. In 6 out of 17 decisions, BOIP decided in favour of the opponent. In 2 cases the opposition was partially accepted, and in 9 cases the opposition was rejected.
C. Only two oppositions were based and judged on other prior rights than trademark rights. The one regarding copyrights (mentioned above) was rejected and Campina”s opposition based on the notoriety of its mark was a set-up (see frame). However, this decision gives a good view of how the evidence filed was judged and can serve as an excellent starting point if you wish to base an opposition on the notoriety of your client”s mark.
D. Only in two cases was the language of the proceedings French. In 15 decisions, the language of the proceedings was Dutch, which means that the large majority of the applications against which an opposition was filed were filed in Dutch. Only in one case did parties agree to exchange arguments in English.
E. 15 Oppositions were directed against a Benelux application and only 2 oppositions against the Benelux part of an International Registration. This may, among other things, be explained by the fact that the opponent in the majority of such cases may choose to initiate a central attack (by taking action against the basic registration) rather than filing oppositions in each of the designated countries.
The basis of the opposition differs (EU, IR and/or Benelux trademarks were invoked) with the emphasis on prior Benelux marks. Regarding invoking a prior CTM which is subject to the use requirement, the BOIP may come up with an interesting view, as will be explained later on.
F. Although in 8 cases (one of) the mark(s) on which the opposition was based was subject to the use requirement, proof of use was requested in only 5 cases. It is interesting to note that in most cases in which the evidence was requested and judged, the prior mark was found valid for only a limited list of goods and services and as a consequence BOIP decided that the goods and services were dissimilar and rejected the opposition.
G. In each case in which the opposition was either accepted or rejected as a whole, a cost award was appointed in the amount of €1000.
H. So far, none of the decisions have been appealed.

Although, of course, an opposition is often filed on the assumption that an agreement may be reached during the statutory cooling-off period, the above analysis of the decisions so far shows that if the adversarial part of the opposition proceedings is entered into without sufficient research, the proceedings may often lead to a negative outcome.

Of course, the applications or registrations on which the oppositions are based must be reviewed thoroughly and the possible other relevant (prior) rights of the applicant should be clear. Furthermore, if the prior mark on which the opposition is based is subject to the use requirement, the opponent should have a clear view of its capacity to prove genuine use of the mark in the Benelux.

In this respect, interesting case law can arise. According to Article 2.26 sub 2a Benelux Treaty on Intellectual Property, a trademark can be declared invalid if, after the date of registration, it is (without a valid reason) not used in a normal manner for five consecutive years in the Benelux. Clearly, while drafting this Article the legislative commission did not bear in mind that the plaintiff may rely on a CTM registration as well. As a result, the current text of the law valid in the Benelux is contrary to the text in the European Regulation. The Benelux Office has drafted a request for review of this text and is aware of the fact that if an opposition is filed based on a CTM registration which is subject to the use requirement and which is used, but not in the Benelux, it has to decide whether to follow ruling Benelux law or European legislation.

Considering the characteristics of the procedure and our experience so far, some strategic notes can be made on how to approach the proceedings from the view of the applicant and opponent.
Prior to or simultaneously with the opposition proceedings, the applicant may be contacted and requested to voluntarily withdraw the application or limit its list of goods and services. During the opposition proceedings, the opponent has to file arguments first, after which the applicant may request proof of use (if the mark relied on is subject to the use requirement) and/or file counter arguments. Consequently, if the opponent”s mark is subject to the use requirement, it would be wise for the applicant to only request such proof of use first and file counter arguments after the proof of use has been filed. Then, the opponent cannot react to arguments filed on behalf of the applicant in response to the filing of the evidence.

Furthermore, the applicant may not wish to react to a cease and desist letter from the opponent, but to await the actual opposition proceedings if the applicant already knows that a demarcation will be difficult to reach. When taking the decision not to correspond with the opponent, the applicant does not give away any of its arguments to which the opponent could react. In such cases, the opponent is unaware of any of the applicant”s possible arguments and can only guess possible counter arguments and make some preliminary notes thereto.

Considering the number of oppositions filed and our experience therein, the Benelux opposition procedure has become an important tool. Not only does it clear the air in a long-lasting conflict with a competitor, but it can also be used to put serious pressure on the other side. This is supported by the figures which show that nearly all oppositions are cancelled or withdrawn without a decision having to be rendered.

Trademark owners should be warned not to enter opposition proceedings too light-heartedly, as past decisions show that such an approach is often reprimanded by the Benelux Office. However, if a clear overview of the rights of both parties and the possible arguments of the other side prior to the opposition proceedings are obtained, the opposition can be filed with confidence and will “statistically” result in a positive solution at very reasonable costs.

Campina logo well-known
Dutch dairy producer Campina needed an official notification that its mark was judged to be well known for a foreign procedure. To obtain such a decision, Campina filed a Benelux application for its device and also filed, via a related company, an opposition solely based on the notoriety of the same device.

Campina filed many different documents in support of its claims. Not surprisingly, the other side filed no counter arguments with respect to the contents. The Benelux Office for Intellectual Property judged each document filed and came to the conclusion that the evidence filed proved the notoriety of the mark in Benelux.

This decision is very useful as the Office set forth its evaluation criteria and applied these to the evidence filed. Therefore, it can serve as a good example if an opposition is filed on the basis of the notoriety of a mark.