Trademark procedures and strategies: Benelux
Benelux trademark law is governed by the Benelux Convention on Intellectual Property, the current version of which entered into force on 1 June 2018. 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.
Benelux is a member to all major international trademark treaties and agreements, including the Paris Convention, 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.
The Benelux Convention 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. Additionally, unfair competition law (especially bad faith) may apply when no registered trademark rights exist.
Who can apply?
As a rule, anyone can apply for Benelux (and EU) trademark protection. Representation by a representative established in the European Economic Area is required when an office action is issued or an opposition, cancellation or nullity action is lodged. These criteria also apply to certification marks. However, regarding collective marks, only branch associations or certain public bodies may apply for registration.
No power or attorney is required for filing for trademark protection in Benelux (or the European Union). A priority claim must be evidenced, 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. 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, non-traditional trademarks, especially three-dimensional trademarks, may be difficult to obtain.
The total official fee for a Benelux trademark application in up to three classes amounts to €248. There are no separate registration fees. Total official fees for an application following the expedited procedure amount to €447. Both types of application are usually filed electronically.
The Benelux Office for Intellectual Property (BOIP) maintains the Benelux Trademarks Register. The registration procedure is largely electronic and fairly efficient.
An application is checked on formal grounds and subsequently on absolute grounds. No check on relative grounds is conducted. In the absence of objections, the application proceeds to registration in approximately three to four months, which includes a two-month publication period. If an office action or refusal is issued, the applicant is granted two months to overcome such objections. The total time taken to overcome a refusal on absolute grounds is six months. If an expedited registration is requested (under payment of the abovementioned additional fee), an accelerated check on formalities is conducted. If no objections arise, the mark is registered in two working days. With this type of application, the check on absolute grounds and publication takes place after registration.
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 for identical, similar and dissimilar goods, provided that the younger mark takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the earlier mark. Finally, according to Article 6bis of the Paris Convention, an opposition may be filed based on a (non-registered) well-known mark.
Filing does not require grounds to be substantiated, and thus it is possible merely to file a formal opposition.
The opposition procedure is similar to the opposition proceedings before the EU Intellectual Property Office. 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/applicant is granted a two-month period to file counter arguments 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.
If the opposition is awarded or rejected in full, opposition fees of €1,030 must be borne by the losing party.
Registrations are valid for 10 years from the application date. The term for use is 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 which 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;
- is similar or identical to a prior trademark registered for similar/identical goods or services; or
- is similar to a trademark with a reputation in 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 as not been put to genuine use within five years of registration.
As of 1 June 2018, 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 and generally follow the same structure as Benelux opposition proceedings and EU cancellation and nullity proceedings.
The term for revocation for non-use starts five years after the registration date.
The BOIP does not carry out an examination on relative grounds during the registration procedure. Instead, the BOIP provides 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).
The enforcement of registered trademark rights in Benelux is efficient. While there is no specialised court for general trademark disputes, most of the district courts and courts of appeal have judges who focus on IP matters. Due to its exclusive jurisdiction for EU trademark and design matters, the Hague District Court has 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.
Under Article 5 of the Dutch Trade Name Act, the owner of a prior trade name (for which registration is not required) can also initiate proceedings against the use of a confusingly similar trade name.
Remedies sought can first consist of an injunction, and then after that a recall of infringing products can be demanded, as well 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, as well as 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, it may also request compensation of its legal costs. It is not possible to claim punitive damages in Benelux.
As of 1 June 2018, any interested person can file a request for cancellation or invalidity with the BOIP, next to initiating a court action.
In the case of trademark infringement, a rights holder may bring a separate claim for the surrender of profits made by the infringer from the sale of the infringing products. In case of bad faith, compensation of damages, as well as a surrender of profit, may be awarded. A claim for compensation of damages can 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 as long as the infringement persists.
The trademark owner must proceed with initiating proceedings on the merit in order 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 which 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 2.24 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 in 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. An exception may be IP infringement cases which 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.
Use by a licensee (and indeed any use with prior authorisation from the mark owner) will be sufficient to maintain the rights in a Benelux mark.
When word marks are also used as the name of a company, 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, are likely to be protected under the Dutch Copyright Act and its Belgian and Luxembourg equivalent, as the scope of protection under both laws is by no means limited to artistic works and the threshold for copyright protection in the Benelux countries is considered to be fairly low. However, copyrights are dealt with on a national level.
Regarding three-dimensional trademark rights, related rights are formed by copyrights, design rights and even unfair competition law. 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.
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, most recently amended in 2010) provides the legal framework for taking action against a conflicting ‘.nl’ domain name. The World Intellectual Property Organisation (WIPO) Arbitration and Mediation Centre is the administrative body in this respect.
The centre may order the transfer of the domain name when the following three conditions are fulfilled:
- The domain name is identical or confusingly similar to:
- a trademark or trade name protected under Dutch law in which the complainant has rights; or
- 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 the arbiters are considered to be experts in their field, so that Uniform Domain Name Dispute Resolution Policy proceedings will generally form a cost-effective solution for ‘.nl’ domain name conflicts.