Netherlands set to ratify amendments to the Benelux Trademark Act

International

The government of the Netherlands is expected to ratify the protocol modifying the Benelux Trademark Act (BTA) in December. This will remove the last hurdle to the implementation of the amendments in Benelux due on January 1 2004 as Article VII of the protocol, which was signed on December 11 2001, provides that the protocol will enter into force on the first day of the month following the deposition of the third act of ratification with the Belgian government. The governments of Belgium and Luxembourg have already submitted their acts of ratification.

The main change brought in by the protocol is the introduction of an opposition procedure into the Benelux trademark registration system. Based on the experience of other EU countries and the Office for Harmonization in the Internal Market, rights holders will have the possibility to file an opposition with the Benelux Trademark Office (BTO) within two months of the publication of an application for a junior mark. The BTO's decision, which will have to be rendered within a reasonable term (about six months), may be appealed before the Courts of Appeal of Brussels, The Hague and Luxembourg. Failure to file an opposition will not affect the right of owners of earlier marks to file cancellation actions before the ordinary Benelux courts. However, filing an opposition procedure will present the advantage of solving conflicts between trademarks in a swift and inexpensive way. The downside is that it will take longer to register a trademark, in particular if the BTO's decision is appealed.

The opposition procedure will be implemented gradually, based on the classes of the Nice Classification for which registration is sought. For instance, in 2004 the BTO will in principle only accept oppositions against trademark applications that concern at least one of the following classes: 2, 20 and 27.

The protocol will also amend the BTA so that exclusive trademark rights are obtained through registration and not merely through filing an application, in compliance with Article 5(1) of the Community Trademark Directive. The filing date will mainly remain of importance for application rankings, priority rights and the duration of trademark rights.

The protocol will also amend the BTA so that it uses the same language as the Community Trademark Directive where referring to likelihood of confusion. The BTA currently provides that the "likelihood of association" between a trademark and a sign (used for identical or similar goods or services) is sufficient to amount to trademark infringement. In contrast, Article 4(1)(b) of the Community Trademark Directive provides that "likelihood of confusion, which includes the likelihood of association with an earlier mark" may amount to infringement. The European Court of Justice ruled in Sabel BV v Puma AG that the mere association that the public may make between two trademarks as a result of their analogous semantic content is not in itself sufficient to conclude that there is a likelihood of confusion within the meaning of Article 4(1)(b) of the Community Trademark Directive. Accordingly, the BTA will be amended to use the same language as the directive.

Lastly, the protocol will create a register of trademark agents. This is to remove competitive disadvantages for trademark agents in Benelux compared to those in countries that already have a system of recognized trademark agents. The creation of a register will also serve the public interest in that it will provide additional assistance to (potential) trademark owners. Registered trademark agents will be eligible to file oppositions on behalf of their clients, while unregistered agents will not.

Michel Draps, Altius, Brussels

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