The Benelux Union is a politico-economic union between Belgium, Luxembourg, and the Netherlands. The union was first envisaged in the year 1944 when the exiled representatives of the three countries signed the London Customs Convention, which established the Benelux Customs Union. The Benelux Economic Union came about in 1958 and became the model for future European integration. Indeed, the economic and political co-operation between the Benelux countries inspired further European co-operation and may be considered one of the forerunners of the European Union.
At the time of writing this article, the Benelux Union boasts a population of roughly 30 million residents, and a combined GDP of EUR 1.431 trillion while covering only 1.7% of the surface landmass of the EU.
In terms of intellectual property, the Benelux Union was also one of the forerunners, setting the basis for a regional unified trade mark system. The Benelux Convention Concerning Trademarks was signed on 19 March 1962 and entered into force on 1 July 1969. It also established the Benelux Trademark Office to implement the convention with an existence separate from The Benelux Union itself.
Soon thereafter, in 1974, the Benelux Treaty on drawings and designs was signed, and the Benelux Office for Drawings or Designs entered operation. It is thus that the scene had been set for regional intellectual property development, which introduced concepts such as unitary regional trade marks and designs, and seniority derived from earlier national rights.
In 2006 the Benelux Convention on Intellectual Property entered into force, replacing the multiple previous rules and conventions with a single treaty, modernising the IP landscape in the region and bringing about the current Benelux Office for Intellectual Property (BOIP). In 2021, the BOIP celebrated its 50th birthday. Although the importance of national offices has somewhat diminished in the field of trade marks and (industrial) designs with the success of the EU Intellectual Property Office and EU-wide unitary protection, the Benelux Office for Intellectual Property remains an important organisation for economic development in the region.
Trade mark filing figures have been around 20,000-21,000 for the past five years, with increased figures coming close to 24,000 applications in the most recent two years, 2020-2021.
This article aims to take a closer look at the Benelux system and what makes it stand out in the European intellectual property family.
How is Benelux trade mark law structured?
Contemporary trade mark law in the Benelux is governed by the Benelux Convention on Intellectual Property (trademarks and designs) (BCIP) and its implementation and functioning is overseen by the BOIP, based in the Hague. The Benelux Union is also party to a number of international agreements, such as the Paris Convention, the Madrid Agreement and Protocol, the TRIPS agreement, and others.
As such, the Benelux Union has similar membership of international treaties related to the regulation of intellectual property as other member states of the European Union. For example, it is possible to designate the Benelux via International Registrations, and it is possible to claim priority from Benelux trade mark applications. Being part of the European Union (and all 3 Benelux countries are founding members of the European Economic Community) has resulted in the harmonisation of Benelux trade mark laws with that of the EU.
It is important to note that although the individual countries fall under the umbrella of the BOIP and the Benelux trade mark system, they have retained their separate court systems for proceedings relating to, for example, IP infringement. The BCIP sets out that the authority of court decisions handed down in one of the three States shall be recognised by the other two States, if the decision is no longer open to opposition or appeal by a court of cassation. The Benelux have also established the Benelux Court of Justice, which has the power to hear questions concerning the interpretation of the BCIP and its implementing regulations.
The BOIP has two official languages – French and Dutch. The working languages of the BOIP are Dutch, French, and English.
Documents relating to transfers, priority, licences etc. will also be accepted, if drawn up in German.
In opposition matters, the language will normally be the working language that the application was filed in, unless the application was filed in English in which case the opponent can choose which working language (English, French, or Dutch) to rely on in the proceedings. If the application is the designation of an International Trade Mark registration, the opponent can choose the language but the applicant will be given the opportunity to disagree and choose one of the other official languages (Dutch or French).
The same language rules also apply to revocation and invalidity proceedings. The parties may also jointly choose one of the working languages of the office. The underlying principle is that the applicant cannot be forced to use a language he does not understand, but the opponent can file his submissions in his preferred language, which will then be translated by BOIP.
Registered vs unregistered rights
Under the BCIP, with the exception of owners of well-known trade marks within the meaning of Article 6bis of the Paris Convention, there is an obligation to register trade marks in order to rely on them. Or, in other words, no one may claim in court protection for a sign deemed to be a trade mark, unless that claimant can provide evidence of registration of the trade mark which it has filed.
The law does not preclude right owners from invoking “ordinary law”, which allows for objections to be raised against unlawful use of signs which are not regarded as trade marks under the BCIP.
In other words, the BCIP does not recognise unregistered trade marks. However, other unregistered rights may potentially be relied upon under the national laws of the member states i.e. Belgium, Luxembourg, and the Netherlands. For example, Belgium and Luxembourg offer limited protection to trade names and company names. The Netherlands provide limited protection for trade names. Such protection will normally be very narrow, subject to use, and limited to the geographical area where the name is used.
The registration of a Benelux trade mark, however, provides prima facie evidence of rights in the trade mark which extends across the whole Benelux territory. Although the validity of a registration can be challenged, unlike with unregistered rights, the existence of the registration does not have to be separately proven by filing evidence or demonstrating use of the mark in commerce unless five years have passed since its registration.
As with the EUIPO, the Benelux office does not require a professional representative to be appointed at the time of filing the application but it does require an address for correspondence in the European Economic Area (EEA).
Any professional representative with an address for correspondence in the EEA can act before the BOIP.
If the BOIP has any reason to doubt the representative’s authorisation, it may request a Power of Attorney for confirmation. Otherwise, a Power of Attorney is generally not required and authorisation is presumed.
Once an application is filed, it undergoes a formalities and absolute grounds examination. Following a successful examination process, the trade mark will be accepted and published for opposition purposes. The opposition period for Benelux trade marks lasts two months from publication and is not extendable.
Should no oppositions be filed, the trade mark application will progress to registration soon after the expiry of the opposition period and a digital registration certificate will be issued by the BOIP. No paper registration certificates are issued – although it is possible to order a certified copy. The usual timeframe from application to registration is 3-5 months if no objections are raised.
The BOIP offers an “accelerated registration” procedure by the payment of an official fee. In this process a registration can be granted within days. This registration can then also be used as a basis for enforcement.
However, the registration is provisional only – a 2 month opposition window and substantive examination follows the initial registration, so further refusals could be issued.
Nevertheless, the accelerated registration procedure does provide the option for quickly obtaining a registered trade mark for use in enforcement, anti-counterfeiting activities, domain name disputes, etc.
As identified above, once the Benelux trade mark is published, there is a two-month non-extendible opposition period. In order for an opposition to be correctly filed, the opponent will need to list the grounds relied upon and file substantive arguments within two months.
A defence by the applicant is required in Benelux oppositions within two months of the opponent’s arguments. If no defence is filed, the opposition will succeed by default.
Cooling-off periods are available in 4 month increments, if the parties wish to negotiate. Furthermore, during the proceedings themselves extensions and suspensions are possible, however, these will be allowed at the discretion of the hearing officer. The parties can request a suspension jointly, or the office may suspend the proceedings, if it believes there are grounds to do so.
Oral hearings may be held in opposition matters either at the parties’ request, or if the BOIP deems that there are grounds for a hearing.
If multiple oppositions are filed, the BOIP will generally decide to examine the opposition the most likely to succeed first and suspend the other oppositions in the meantime.
Costs are awarded by the BOIP at the conclusion of opposition proceedings.
It is possible to appeal the opposition decision to a court of cassation in one of the Benelux states.
Revocation and invalidity
Similar procedures apply to cancellation actions which can be divided into two:
- revocation actions – on grounds of non-use of a Benelux trade mark, or if a mark has become generic or misleading through the use that has been made of it; and
- applications for invalidity (either based on absolute or relative grounds).
The main difference between the two is that a revocation action, if successful, will apply from the date of the request, whereas a declaration of invalidity removes the registration from the BOIP register with retroactive effect.
Generally, mutatis mutandis, the same rules apply to revocation and invalidity proceedings.
Duration of protection and use requirements
Benelux trade marks are registered for 10 years and can potentially be maintained in force indefinitely with the payment of renewal fees.
Following the registration of a Benelux trade mark, there is a 5-year grace period during which the proprietor can initiate use of the trade mark in commerce.
Once the grace period ends it is possible for third parties to initiate cancellation proceedings and apply to revoke the trade mark registration on grounds of non-use.
One immediate consideration that flows from the foregoing is that as long as a Benelux trade mark is within its grace period it will form a valid basis for opposition or enforcement through infringement proceedings regardless of whether or not the trade mark has been put to genuine use in the Benelux.
As such during the first five years from the registration of the trade mark relied upon, it will not be possible for a defendant to rely on the non-use of a Benelux trade mark to defend itself.
Conversely, once a Benelux trade mark has been registered for five years, it will be possible for the defendant to request proof of use at an early stage in proceedings and the onus will be on the owner of the trade mark to furnish evidence of use. Whether or not a trade mark has been put to “genuine use” in the Benelux is examined on a case-by-case basis and will depend on the nature of the goods and/or services in question and the peculiarities of the market concerned.
Evidence of use will be acceptable from the relevant preceding five-year period, e.g. as calculated from the date of the filing of an opposition. As a general rule evidence of use from the three months immediately preceding the relevant date will not be considered, so as to avoid situations where a trade mark is used only for the purposes of providing evidence.
It is also possible to provide justifications for non-use, e.g. when the use of a particular mark has been delayed due to reasons outside the proprietor’s control. Such reasons could relate to, for example, in the context of medical drugs, delays in obtaining approval from national health authorities for the marketing of the products.
Preparations made for starting to use a trade mark in commerce may also be taken into account.
Priority and Seniority
It is possible to rely on a first filing of a trade mark application in the Benelux as a basis for a priority claim in overseas territories during the first six months following the filing of the application. Claiming priority allows the effective date of validity of a subsequent application to be dated back to the original filing date of the first application. Overseas priority will also be recognised when filing Benelux trade marks.
Seniority is a unique feature of the EU trade mark system. It has its roots in the process of harmonisation of the internal market and allows for the information (including the date of validity) of earlier national registrations for the same trade mark be recorded against a subsequently filed EU trade mark.
The effect of recording a seniority claim against an EU trade mark is that the EU trade mark will obtain the same effective date of validity in relation to the goods and/or services in question in the particular territory concerned as that of the original national registration. The national registration can then be allowed to lapse in favour of savings on renewal costs. It is possible to record multiple seniorities against an EU trade mark.
Seniority can be claimed from Benelux trade marks. The Benelux system also recognises “seniority” of earlier Dutch, Belgian, and Luxembourgish registrations prior to the entry into force of the Benelux trade mark system.