Key features of the Benelux trademark law reform – the second part

• English

As announced in our first article on "Key features of the Benelux trade mark law reform," starting with March 1, 2019, the further amended Benelux Convention on Intellectual Property (BCIP) entered into force, implementing the European Trademark Directive 2015/2436 and aligning the Benelux trademark law with the EU trademark law.

This reform is a modernization and simplification of the current system and is likely to result in advanced protection for the trademark rights holder, as well as more obligations.

The main changes are:

• Representation of the trademark no longer tied to a graphical representation;
• Introduction of certification marks;
• Extension of the grounds for refusal & opposition and cancellation proceedings.

Representation of the trademark no longer tied to a graphical representation

According to the amended article 2.1, in fact, a sign can be represented in any appropriate form using generally available technology. Consequently, it is now possible for trademark owners to register trademarks featuring any sign, not only with words and graphics, but also with sound and video files (MP3 and MP4), as well as with shapes and products dress-up (JPEG), and potentially tastes and smells. For taste and smell marks there have not yet been communicated any "not acceptable" file formats.

Due to the introduction of these non-conventional forms of trademark, there is no need for more precision in the trademark description. More specifically, the sign representation in the register has to be clear, self-contained, easily accessible, intelligible, durable and objective, in a manner which determines the clear and specific subject matter of the protection.

The new application requirements are likely to bring more legal certainty for: 

1. Trademark owners, regarding their rights protection;
2. Third parties, making trademark availability assessment more easier. 

Trademark description accuracy could also reduce the rate of the Office objections regarding the lack of formality requirements.

Introduction of certification marks

The reformed BCIP allows registering certification marks in addition to individual and collective marks. The latter have also been amended as before they performed the function of certification marks.

Certification marks show that the owner of the trademark has guaranteed a specific characteristic of the goods, such as a particular way of producing or complying with specific quality criteria. The only exception to that is the geographical origin of the characteristic, which cannot be used as a certified characteristic. The certification mark owner, however, cannot use the trademark by marketing the goods and services itself. Nevertheless, the regulation of use governing the mark is necessary, as it is for the collective marks.

The "new" collective mark shows a product or a service originated from a member of an association, which is the sole owner of the trademark. A collective mark can be used as an indicator of geographical origin, unlike the certification mark. It is most likely that a large number of "old" collective marks will also qualify as certification marks and can be converted as such. Holders of a collective mark will be asked by the BOIP to choose whether to turn it into a certification mark or keep it as a collective mark.

Extension of the grounds for refusal and opposition and cancellation proceedings

In addition to the exclusions set by the combined provisions of previous articles 2.4 and article 2.11, the new article 2.2bis provides further absolute grounds for refusal.

A trademark can be refused or canceled if it consists exclusively of the shape, or another characteristic resulting from the nature of the goods, necessary to obtain a technical result and giving substantial value to the goods. A trademark could be equally refused if it contains:

1. Protected designations of origin and geographical indications (PDO, PGI);
2. Protected traditional terms for wine;
3. Protected traditional specialties guaranteed (TGS) and;
4. Plant variety denominations (PV).

Because the distinctiveness and descriptiveness assessment bar has been raised, applicants should adopt unique trademarks. It is worth noting that applicants claiming protection for food, drinks and plants products should carry out availability searches in the relevant PGI, PDO, TSG and PV registers. Nevertheless, in order to avoid a refusal, there is the possibility to limit the use of the trademark in compliance with the specifications of the PGI, PDO, TSG and PV.

Likewise, the new article 2.2ter introduces new relative grounds on which to base an opposition or an application for a declaration of invalidity, and which are set in paragraph 3 as follows:

1. Earlier trademark with a reputation and use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark;
2. An agent or representative of the proprietor of the trademark applies for registration thereof in his name without the proprietor's authorization, unless the agent or representative justifies his action;
3. Protected designations of origin and geographical indications.

It is worth noting that it is now possible to request the invalidation of a trademark if the applicant was acting in bad faith when he applied for the trademark. In addition to the main features listed above, further amendments have strengthened the rights of the trademark holder, as well as laid down more obligations for them. 

We are happy to advise on how to make the most of the new Benelux trademark reform.