As of 1 June 2018, the Benelux Convention on Intellectual Property (“BCIP’) will be amended, giving the Benelux-Office for IP (“BOIP”) new authorities, and expanding the authority of the Benelux Court of Justice. We have summarized the most important changes below.
Cancellation proceedings of a Benelux trademark (either on absolute grounds, non usus or trademark infringement) should currently be filed either before the competent court of The Hague, Brussels or Luxembourg. It goes without saying that these proceedings can be rather time-consuming since at least the court of The Hague is known to have serious backlog. As from 1 June 2018, it’s possible to file cancellation actions before the Benelux-Office for IP, apart from the existing proceedings before the national courts.
The cancellation proceedings before the BOIP are in line with the opposition proceedings: short time limits for substantiating claims (2 months), the same language regime (language of the defendant, unless the trademark was filed in a different language) and the possibility of suspension on mutual consent. In case of cancellation due to non-use, the defendant is first requested to submit documents that demonstrate the use of the mark. As for the costs, these are substantially lower than court proceedings: the BOIP charges a fixed office fee of EUR 1,400 for handling the proceedings (with a small additional fee for each mark or claim above the third).
As of 1 June 2018, the current grounds for filing opposition will be expanded, making it possible to not only file opposition based on identical prior mark for identical goods (“sub a”) or a similar prior mark in case of likelihood of confusion (“sub b”), but also in so-called “sub c”-matters. Starting from June 1st, the owner of a well-known trademark can thus oppose a younger trademark, even if the mark is filed for dissimilar goods and services, provided that the younger mark takes unfair advantage of, or is detrimental to, the distinctive character of the trademark invoked.
Benelux Court of Justice
The last important change concerns a matter of standardization of Benelux trademark law. Currently, appeals against a decision of the BOIP are filed before the competent courts of either The Hague, Brussels or Luxembourg, depending on the nationality of the claimant. Over the years this has led to divergent national decisions in similar cases. As from 1 June 2018, all appeals against decisions of the BOIP can only be filed before a newly installed Second Chamber of the Benelux Court of Justice, ensuring uniformity of Benelux trademark law.