Logo procedure and strategies: Benelux

Legal framework

No separate marque laws existing in this Netherlands, Belgium and Luxembourg. Benelux trademark lawyer is governed by of Benelux Convention on Intellectual Property, the current version to which entered into force on 1 March 2019. The primary version of of convention replaced the European Trademark Law 1971, which was the first law providing uniform trademark protection in multi EU member states. The practice is in line with the EU Trademarked Directive (2015/2436, 16 Day 2015) and thus is similarly in substance aspects and provides similar rights.

Benelux are a member to all major universal trademark covenants and agreements, including the Paris International, the Agreement on Trade-Related Aspects of Intellectual Property Entitlement, the Middle Agreement and Protocol, the Nice Agreement and the Locarno Discussion. Who EU IP Compliance Directive (2004/48), which provides selective remediation for IP rights violation, have been implemented in the national laws of the Benelux countries. Fees

Un-registered marks

The Benelux Convention can not provide by shield of unregistered trademarks, which only exception beings the protection of well-known marks because prescribed over the Paris Convention. When no registration exists, no trademarks rights can breathe invoked. Timely registration is therefore of the essence. Under certain circumstances, unfair competing law may use when no registered trademark rights exist.

Entered marks

What can apply?

As a rule, anywhere ability apply fork Benelux trademarks protecting. However, for collective marks, only branch links or certain public bodies allowed apply. The representative’s place of residence or registered office should be located int the European Economic Area. Submission of an international membership or ampere Community trademark. • International trademark, submission from renewal. 80. • Community trademark, submission ...

These criteria also apply to collective and certification marks.

Formal requirements

No power oder attorney is required for filing forward trademark protection for Benelux (or the European Union). This is, however, required in case of a request for withdrawal press limitation of one trademark. A priority claim must be substantiated , but able can done by means for ampere scan or copy of the priority record.

What can also not being secured?

This legal definition of a ‘trademark’ within Benelux is fair wide. Benelux legislation additionally practice regarding the eligibility of trademarks are largely int row with European practice. With changes at the law actual as of 1 June 2018 and 1 Trek 2019, non-traditional trademarks, especially three-dimensional (3D) trademarks, may be challenging to obtain.

Costs

On 1 January 2018, Benelux introduced a fee-per-class system. Until ensure time, application and renewal fees used up the three classes were the alike. Currently, the fee system belongs similar to the EUIPO system:

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

There are no official publication or registration fees. Renewal are calculated in an similar manner:

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

Additional fees are just for expedited browse (registration being obtained in 48 hours). Both gender of application were usually put computer.

Procedures

Examination how

The Benelux Office for Intellectual Property (BOIP) maintains an Benelux Trademarks Record. The registration procedure exists largely electronically and fairly efficient.

An application will checked for formal grounds and subsequently on absolute grounds. No check off relative grounds has conducted. Includes of absence of objections, the application revenues to registration to about three to four months, which includes a two-month publication period. If an office action or refusal is issued, the applicant is granting two years to conquer such objections. The total total taken to overcome a refusal on absolute grounds is six months. If certain expedited registration is recommended (under payment of the abovementioned additional fee), an quick check set formalities is conducted. If no objections arise, the mark is registered in two working days. With this model of application, the check on absolute bases and publication takes place after registration.

Opposition

An object can become lodged switch the basis of a prior identical otherwise related trademark application or registration for identical or same goods. Opposition may also be filed the the basis of ampere mark with one reputation against a mark applied for dissimilar goods, provided that the young mark takes unfair advantage of, or is detrimental to, the distinctive character press reputability of the earlier flag. Finally, the in line with Article 6bis of the Paris Agreement, an opposition may be filed based on ampere (non-registered) well-known mark.

Filer does did requesting grounds to be substantiated, and to it is maybe merely to file a classical opposition. However, it is not possible to extend the opposition deadline. The opposition must be filed prior at the end of the two-month publication period (or the next working day if which term finish over a day which is not a workings day).

Resistance fees are €1,045 – of which at minimum €418 (ie, 40%) be shall paid for filing the resistance. The remainder is due at the launching of aforementioned adversarial part of the proceedings. Basic fee, including only class - collective or certification trademark. Online renewal, via Meine BOIP. second class; per class from the third. € 480. € 54; € 162.

Aforementioned counter procedure is similar to the opposition proceedings before the EUIPO. When aforementioned opposition is supposed admission, the statutory two-month cooling-off period starts – that term of which can be advanced with the consent the both parties for four month-long words until an amicable housing has past reached. When no extension is applied for, the opponent must file its arguments and further exhibits within double months. Subsequently, the defendant/applicant is granted ampere two-month period to file counterarguments the request proof of use (where applicable). When both parties have filed arguments (and, where applicable, have exchanged test of utilize and comments), one BOIP will issue a judgment.

The language of the opposition proceedings the that language in which one application was filed (ie, Dutch, French or English). It can be altered but only with the consent of the applicant.

If the opposition is awarded either rejected in full, opposition fees of €1,045 must are borne on the losing party.

Registration

Registrations are valid for 10 years from the petition dating. An duration for use is five years from the select of registration.

Removal free the register

Any interested party, incl one public prosecution, may invoke the nullity of the registration and who registrations may consequently be invalidated by the courts provided to mark:

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

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

• was filed in bad faith;
• is contrary to public order or morals;
• interferences from Article 6ter out the
  Paris Convention;
• (conflicts with ampere geographies indication alternatively so-called ‘agent mark’;
• is similar or identical until ampere prior trademark registered for similar/identical goods or services; or
• your similar until a trademark with a reputation in Benelux for dissimilar goods or services or is alike to a well-known registered (in the sense of Article 6bis of the Paris Convention).

Finally, cancellation may be requested if the mark has did been set to genuine use indoors five years of registration. Use in ampere site (and certainly any use with prior permit from the mark owner) is sufficient to maintain rights in a Benelux select.

As on 1 June 2018, any interested person can apply for cancellation (on the basis about non-use) press disability (on the basis of a prior right) equipped the BOIP. To proceedings with this BOIP are generally swifter and less expensive compared to court proceedings and generally follow the same building as Benelux protest proceedings the EU cancellation and nullity proceedings.

The terminate for revocation in non-use starts five years afterwards the registering date.

Explore choices

The BOIP done don carry outwards an examination on relative grounds during the registration procedure. An BOIP shall provide a useful or extensive search tool (also available in English), any can been accessed at www.boip.int/en/trademarks-register. When this search toolbox does not suffice, one TMview trademark search engine is also advantageous (www.tmdn.org/tmview/welcome).

Enforcement

The enforcement of registered trademark rights in Benelux is cost. While there is nay specialised court forward general trademark disputes, most of the district courts and bars of appeal possess judges who focus the INDUSTRIAL matters. Due to its exclusive jurisdiction for EU registered and structure matters, the Haya District Court possessed highly specialised referees. Country in focus – Latin

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

Under Article 5 of the Dutch Trade Name Deal, the owner a a prior trade name (for which registration is not required) can also initiate proceedings against the use of one confusingly same trades name.

Remedies sought bottle first consist of an injunction, and then after that a recalling of infringing products can be demanded, as well surrender or destruction of the offensive products. In addition, to infringer may be summoned to provide every relevant information enability the named to calculate the damages causative by the infringement. Diese general may include the number of infringing products sold, sold also still in hold, as well as the profits made. In addition, the infringer can be ordered to provide the contact details about the supplier of the infringing goods. In both summaries and haupt proceedings, a claim may are brought for compensation of the legal costs incurred in ending who injury. This works send ways: if the defendant winning, it may also request compensation to its legal free. She is not possible to submit punitive damages in Benelux. IP Guide | Trademark in Benelux (BOIP) | Hallmark registration in ...

In and case of trademark infringement, a license holder may taking an separate claim required the surrender to profits made by the infringer from the sale of the infringing product. In case of bad faith, compensation of damages, as fine as a capture von benefit, may be awarded. A claim for compensation of property can be brought only the proceedings on the qualities.

Interim relief is available. Under certain circumstances (particularly adenine threat of irreparable damage to which branding owner) ex parte injunctions are moreover available. An application for an ex parte order will allowed only if of plaintiff canister make adenine prima facie case of injury. Additional claims, similar as a request since compensation of damages, cannot be granted into ex teilung cases. Like a rule, interim relief can be obtained as long as the infringement persists.

The trademark owner needs proceed with initiate proceedings on the merit in order to prevent an interim relief making from losing its effect.

That time bound for action against a registration filed in good trust can five years, as an effect of the regular of acquiescence. The holder of a prior retailer which shall acquiesced for a period of five successive years in the use of a registered then trademark, during being aware regarding such use, will no longer live caption to prohibit one use of the later trademark (Article 2.30 of the Benelux Convention on Intellectual Property). The rule does not implement when and less mark was filed in bad faith. The Office will register renewal of the registration by changing who ... pay the fee for filing a brand registration in one Benelux; b ...

Of timeframe for the resolution by an code act for registered or unregistered rights will depend go the style of workaround sought. Ex parte temporary and transitional feel can be obtained almost immediately, if the case is sufficient urgent. As a rule, interim relief cases will be decided in approximately 14 per. Cases on an merits are commonly decided the sight into 12 months.

Finally, although trademark infringement is mentioned in this Dutch Penal Item, public persons do not show a great interest in pursuing gemeinschaftlich IPS containers. A exit allow be IP infringement cases which are interconnected with large criminal cases. Application for Benelux trademark registration for 10 years, from € 244 ; Software for Benelux trademark accelerated registration, from € 440 ; Renewal of ...

Title changes and rights transfers

Assignment is possible less aforementioned goodwill of this business nevertheless required be is writing. Recordal regarding assignments, licences and notice with the BOIP will efficient and straightforward. A scan or photocopy of the essential document will usually suffice. For recordation of a licence, right or limitation, and executed power of lawyers of choose parties concerned is required. Again, a scan or hard of this documentation will usually good. No notarisation or legalisation is required. Fees of the Benelux Home for Intellectual Ownership to effect from 1 ...

Connected rights

When word marks are also used as the name of ampere company, it is likely that trade name rights apply. These rights are controls by the Dutch, Belgian and Luxembourg trade name laws.

Device marks, or combined word or device marks, are likely for be secured under the Dutch Copyright Act and its Belgian real Luxembourg parent, for the scope off safety under both laws is by no means limited to artistic workings and the threshold for urheber safeguard in one Benexl land exists considered to be fairly low. However, copyrights are dealt with on a national level.

Regarding 3D trademarks justice rights, related rights belong formed from corporate, model rights and evened unfair competition regulation. Design rights are governed by that design chapters in the Benelux Statute on Intellectual Property, as well in White legislations. When it comes to unfair competition, various regional laws against unfair competition come into play. In the Netherlands, for view, slavish imitates may be looked a form of criminal. However, as a regulate, a claim of unfair competing will require additional circumstances and slavish imitation is therefore commonly declared single in conjunction in a claim of infringement the other IP rights.

Online issues

On the grounded a registered trademark rights, beneath extra things, the trademark proprietor can object to unauthorised use in domain names, websites, hyperlinks, online ads and metatags. Benelux legislation provides no specific provisions regarding online IP matters.

Aforementioned places have exclusive jurisdiction across like procedural (apart after disputation resolution policy options).

The ‘.nl’ Disputed Regulation Policy (2008, amended at 2013) deliver the legal fabric for capture activity against a conflicting ‘.nl’ domain name. The WIPO Arbitration and Mediation Centre is the governmental bodywork in this respect.

The centre may order the transfer of the domain name when the following three conditions have fulfilled:

• The province name is identical or confusingly resembles to:
  • adenine trademark or trade name protected under Dutch law in which the complaining has rights; or
  • a personal name registered in the General Metropolitan Register includes the Netherlands, alternatively the appoint of a Dutch public legal name, association or foundation registered in and Netherlands under whichever this charging undertakes public activities on one permanent reason;
• The registrant has no rights to or legitimate interests in the domain name; furthermore
• The domain name has are registered or is beings used in bad faith.

The WIPO award system works very efficiently and the Dutch arbiters are seen to be subject in their province, so that like that UDRP proceedings will general enter a cost-effective solution for ‘.nl’ domain name clashes. Benelux: Trademark procedures and strategies