Benelux: Trademark procedures and strategies

Legal framework

No separate trademark laws exist in the Netherlands, Belgium and Luxembourg. Benelux trademark law is governed by the Benelux Convention on Intellectual Property, the current version of which entered into force on 1 March 2019. The first version of the Convention replaced the Benelux Trademark Law 1971, which was the first law providing uniform trademark protection in multiple EU member states. The Convention is in line with the EU Trademarks Directive (2015/2436, 16 December 2015), and thus is similar in material aspects and provides similar rights.

The Benelux is a member to all major international trademark treaties and agreements, including the Paris Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights, the Madrid Agreement and Protocol, the Nice Agreement and the Locarno Agreement.

The EU IP Enforcement Directive (2004/48), which provides specific remedies for IP rights infringement, has been implemented in the national laws of the Benelux countries.

Unregistered marks

The Benelux Convention on Intellectual Property does not provide for protection of unregistered trademarks, the only exception being the protection of well-known marks as prescribed by the Paris Convention. When no registration exists, no trademark rights can be invoked. Timely registration is therefore of the essence.

Registered marks

Who can apply?

As a rule, anyone can apply for trademark protection in the Benelux. However, special requirements exist with respect to ownership of collective marks and certification marks. The representative’s place of residence or registered office should be in the European Economic Area.

Formal requirements

No power or attorney is required for filing for trademark protection in the Benelux (or the European Union). The filing of a power of attorney, however, is required in the case of a request for withdrawal or limitation of a trademark. A priority claim must be substantiated but can be done by means of a scan or photocopy of the priority document.

What can and cannot be protected?

The legal definition of a trademark in Benelux is quite broad. The requirement of graphical representation has also been abolished. Benelux legislation and practice regarding the admissibility of trademarks are largely in line with European practice. Despite changes in the law effective as of 1 June 2018 and 1 March 2019, non-traditional trademarks, especially three-dimensional trademarks, are generally difficult to obtain.

Costs

The Benelux has a fee-per-class system. As at January 2022, the official fees were:

• €244 for an application in one class;
• €27 for the second class; and
• €81 for each additional class.

There are no official publication or registration fees. Renewals are calculated in a similar manner:

• €263 for the first class;
• €29 for the second class; and
• €87 for the third and subsequent classes.

Additional fees are due for expedited applications (registration being obtained in 48 hours) as well as collective and certification trademark applications.

Procedures

Examination procedure

The Benelux Office for Intellectual Property (BOIP) maintains the Benelux Trademarks Register. The registration procedure is almost entirely done electronically and is fairly efficient.

An application is checked on formal grounds and subsequently on absolute grounds. No check on relative grounds is conducted. After publication, the two-months’ opposition period commences. This term is not extendible.

In the absence of objections, the application will proceed to registration in approximately four months. If an office action or refusal is issued, the applicant is granted an initial term of one month to overcome such objections, which may be extended to a maximum of six months. If an expedited registration is requested (under payment of the above-mentioned additional fee), an accelerated check on formalities is conducted. If no objections arise, the mark is registered within two working days. With this type of application, the check on absolute grounds and publication takes place after registration, which implies that the registration may be cancelled eventually.

Opposition

An opposition can be lodged on the basis of a prior identical or similar trademark application or registration for identical or similar goods. Opposition may also be filed on the basis of a mark with a reputation against a mark applied for dissimilar goods, provided that the younger mark takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the earlier mark.

Also, and in line with Article 6bis of the Paris Convention, an opposition may be filed based on a non-registered well-known mark. A more recent development is that the grounds for opposition have been extended to unauthorised filings by agents and protected designations of origin and geographical indications.

The opposition grounds do not need to be substantiated within the opposition form, thus it is possible merely to file a formal opposition. An opposition must be filed prior to the end of the two-month publication period (or the next working day if the term ends on a day that is not a working day).

Opposition fees are €1,045 – a relatively high amount, the effects of which are, however, mitigated by the rule that only 40% thereof needs to be paid at the time of filing the opposition. Only when a case is not settled within the reglementary cooling-off period is the remaining 60% of the fee payable.

The opposition procedure is similar to the opposition proceedings before the EUIPO. When the opposition is deemed admissible, the statutory two-month cooling-off period starts – the term of which can be extended with the consent of both parties for four month-long terms until an amicable settlement has been reached. When no extension is applied for, the opponent must file its arguments and further evidence within two months. Subsequently, the defendant or applicant is granted a two-month period to file counterarguments and request proof of use (where applicable). When both parties have filed arguments (and, where applicable, have exchanged proof of use and comments), the BOIP will issue a decision.

The language of the opposition proceedings is the language in which the application was filed (ie, Dutch, French or English). This standard language can be changed, but only with the consent of the trademark applicant. If the application was filed in English, however, the language of the proceedings may be chosen by the opponent.

If the opposition is awarded or rejected in full, the opposition fees of €1,045 must be borne by the losing party. The cost decision constitutes an enforceable judgment.

Appeal

Appeals against decisions issued by the BOIP must be brought before the second chamber of the Benelux Court of Justice. The appeal deadline ends two months after the notification of the final BOIP decision.

Registration

Registrations are valid for 10 years from the application date. The use requirement commences five years from the date of registration.

Removal from the register

Any interested party, including the public prosecutor, may invoke the nullity of the registration and the registration may consequently be invalidated by the courts if the mark:

• is a sign that is not distinctive;
• is misleading; or
• has become the usual denomination for the goods or services involved.

In addition, nullity may be requested if the mark involved:

• was filed in bad faith;
• is contrary to public order or morals;
• conflicts with Article 6ter of the Paris Convention;
• conflicts with a geographical indication or constitutes a so-called agent mark;
• is similar or identical to a prior trademark registered for similar or identical goods or services; or
• is similar to a trademark with a reputation in the Benelux for dissimilar goods or services or is similar to a well-known trademark (in the sense of Article 6bis of the Paris Convention).

Finally, revocation may be requested if the mark has not been put to genuine use within five years of registration. Use by a licensee (and indeed any genuine use with prior authorisation from the mark owner) is sufficient to maintain rights in a Benelux mark.

Any interested person can apply for cancellation (on the basis of non-use) or invalidity (on the basis of a prior right) with the BOIP. The proceedings with the BOIP are generally swifter and less expensive compared to court proceedings. Moreover, the proceedings generally follow the same structure as Benelux opposition proceedings, and EU cancellation and nullity proceedings.

Search option

The BOIP does not carry out an examination on relative grounds during the registration procedure. The BOIP does provide a useful and comprehensive search tool (also available in English), which can be accessed at www.boip.int/en/trademarks-register. When this search tool does not suffice, the TMview trademark search engine is also useful (www.tmdn.org/tmview/welcome).

Enforcement

The enforcement of registered trademark rights in the Benelux is efficient. While there is no single specialised court for general trademark disputes, most district courts and courts of appeal have judges who focus on IP matters. Due to its exclusive jurisdiction for European trademark and design matters, the Hague District Court has highly specialised judges.

Most infringement actions will relate to the use of an identical or similar sign for identical or similar products or services. In addition, an action can be brought based on infringement of a well-known trademark.

Remedies sought can first consist of an injunction, after which a recall of infringing products can be demanded, as well as surrender or destruction of the infringing products. In addition, the infringer may be summoned to provide all relevant information enabling the plaintiff to calculate the damages caused by the infringement. This information may include the number of infringing products bought, sold and still in stock, along with the profits made. In addition, the infringer can be ordered to provide the contact details of the supplier of the infringing goods. In both summary and main proceedings, a claim may be brought for compensation of the legal costs incurred in ending the infringement. This works both ways; if the defendant prevails, they may also request compensation of their legal costs. It is not possible to claim punitive damages in the Benelux.

In the case of trademark infringement, a rights holder may bring a claim for the surrender of profits made by the infringer from the sale of the infringing products. A claim for compensation of damages can, however, be brought only in proceedings on the merits.

Interim relief is available. Under certain circumstances (particularly a threat of irreparable damage to the trademark owner), ex parte injunctions are also available. An application for an ex parte injunction is granted only if the plaintiff can make a prima facie case of infringement. Additional claims, such as a request for compensation of damages, cannot be granted in ex parte cases. As a rule, interim relief can be obtained provided that the infringement persists.

The trademark owner must proceed with initiating proceedings on the merit to prevent an interim relief decision from losing its effect.

The time limit for action against a registration filed in good faith is five years, as an effect of the rule of acquiescence. The holder of a prior trademark that has acquiesced for a period of five successive years in the use of a registered later trademark, while being aware of such use, will no longer be entitled to prohibit the use of the later trademark (Article 2.30 of the Benelux Convention on Intellectual Property). This rule does not apply when the younger mark was filed in bad faith.

The timeframe for the resolution of an enforcement action for registered and unregistered rights will depend on the type of remedy sought. Ex parte injunctions and interim relief can be obtained almost immediately, if the case is sufficiently urgent. As a rule, interim relief cases will be decided within approximately 14 days. Cases on the merits are commonly decided in six to 12 months.

Finally, although trademark infringement is mentioned in the Dutch Penal Code, public prosecutors do not show a great interest in pursuing common IP cases in the Netherlands. An exception may be IP infringement cases that are interconnected with large criminal cases.

Ownership changes and rights transfers

Assignment is possible without the goodwill of the business but must be in writing. Recordal of assignments, licences and liens with the BOIP is efficient and straightforward. A scan or photocopy of the underlying document will usually suffice. For recordation of a licence, lien or limitation, an executed power of attorney of all parties concerned is required. Again, a scan or photocopy of the document will usually suffice. No notarisation or legalisation is required.

Related rights

In the case of service marks that also constitute the company name, it is likely that trade name rights apply. These rights are governed by the Dutch, Belgian and Luxembourg trade name laws.

Device marks, or combined word or device marks, may under circumstances also be protected under the copyright laws of the Benelux countries, as the scope of protection under such laws is not limited to artistic works and the threshold for copyright protection in the Benelux is considered to be fairly low. However, copyrights are dealt with on a national level.

Design rights are governed by the design chapters in the Benelux Convention on Intellectual Property, as well as European legislation. When it comes to unfair competition, various national laws against unfair competition come into play. In the Netherlands, for example, slavish imitation may be considered a form of tort. However, as a rule, a claim of unfair competition will require additional circumstances, and slavish imitation is, therefore, commonly claimed only in conjunction with a claim of infringement of other IP rights.

Online issues

On the basis of registered trademark rights, among other things, the trademark owner can object to unauthorised use in domain names, websites, hyperlinks, online ads and metatags. Benelux legislation provides no specific provisions regarding online IP matters.

The courts have exclusive jurisdiction over these proceedings (apart from dispute resolution policy options).

The ‘.nl’ Dispute Regulation Policy (2008, amended in 2013) provides the legal framework for taking action against a conflicting ‘.nl’ domain name. The WIPO Arbitration and Mediation Centre is the administrative body in this respect.

The centre may order the transfer of the domain name when the domain name is identical or confusingly similar to:

• a trademark or trade name protected under Dutch law in which the complainant has rights;
• a personal name registered in the General Municipal Register in the Netherlands, or the name of a Dutch public legal entity, association or foundation registered in the Netherlands under which the complainant undertakes public activities on a permanent basis;
• the registrant has no rights to or legitimate interests in the domain name; and
• the domain name has been registered or is being used in bad faith.

The WIPO arbitration system works very efficiently, and Dutch arbiters are considered to be experts in their field, so that UDRP proceedings will generally form a cost-effective solution for ‘.nl’ domain name conflicts. In Belgium, the legal situation is very comparable. Next to court proceedings, it is possible to initiate ADR proceedings at the Belgian Center for Arbitatration and Mediation (CEPANI). In the event of a dispute regarding a .lu domain name, legal proceedings would be necessary. The .lu registry’s range of action is limited to enforcing court decisions.