Designs and Models
– Benelux Convention on Intellectual Property (including its Implementing Regulation and the accompanying explanatory memorandum), signed on February 25, 2005, ratified by Belgium on March 30, 2006, by Luxembourg on May 24, 2006, and by the Netherlands on June 29, 2006, effective on September 1, 2006. Replaces the previous legislation.
Membership in International Conventions
– The Benelux countries are members of The Hague Agreement concerning the International Deposit of Industrial Designs.
– Belgium and The Netherlands are Members of the Locarno Agreement Establishing an International Classification for Industrial Designs.
Application: may be filed at the Benelux Office for Intellectual Property in The Hague, the national administrations in The Hague, Brussels or Luxembourg or through an international application in Geneva.
Foreigners and nationals not living in the Benelux: any person who has neither a head office nor a domicile in the European Union or the European Economic Area and has not appointed an agent must provide a postal address in this territory.
Priority: Convention priorities may be claimed.
Object: the appearance of a product or a part thereof, which is new and has an individual character.
Novelty: no identical design or design which characteristics differ only in terms of significant details has been disclosed to the public prior to the filing or the priority date.
Individual character: the overall impression produced by the design on the informed user must differ from the overall impression produced by already disclosed designs. When assessing the individual character, one must take notice of the amount of freedom the designer had when designing the appearance of a product or a part thereof.
Grace period: novelty is not destroyed by the disclosure of the design or model by the holder if he applies for registration within twelve months of the disclosure.
Claiming of Convention priority: may be filed at the moment of the application and until one month thereafter. A copy of the priority application is required (certification not required).
Multiple filing: one Benelux application may contain different designs, with a maximum of fifty, without the necessity of a connection between those different designs.
Reprieve of publication: the applicant may, when filing the design, request to reprieve the publication of the registration for a period which may not exceed twelve months as from the date of the application or as from the priority date.
Filing requirements for an application (to be sent to resident agent), the filing of a Benelux design must be in French, Dutch or English:
1. Full name and address of the applicant. If the applicant is a legal entity, mention of its legal form (e.g.: S.A., N.V., Ltd. etc.), where appropriate, the agent’s name and address or postal address (located in the EU or EEA);
2. Photographic or graphic representations of the product to be protected;
3. The precise indication of the product in which the design or model is incorporated;
4. If the design is filed in color, a description of the color(s) and optionally the corresponding color code;
5. Information about the Convention priority and a copy of the priority application (this document may be filed after the application);
6. Assignment of priority rights (if applicable);
7. The signature of the applicant or the agent.
Examination as to the form but not novelty nor individual character.
Acquisition of the right: only through deposit followed by registration and publication.
Duration of registration: five years, renewable four times for successive periods of five years, up to a maximum of twenty-five years.
Renewal: can be applied for during the year preceding the due date or until six months afterwards with payment of an additional fee.
Creator and first user: may under certain conditions claim the ownership of the registration (within five years after the publication of the application) or apply (without any time limit) for revocation of a deposit made by a third party without his consent.
Right of personal possession: any party, who in good faith has manufactured in the Benelux a design which is the object of an application subsequently filed by another party, will be allowed to continue such manufacture and to perform all other actions (except the import) which are entitled to the holder of a registered design.
Assignment: possible without the goodwill of the business, but must be in writing and cover the whole Benelux territory or it shall be null and void. Recording assignments with the Benelux Office for Intellectual Property is advisable to ensure opposability to third parties and can be done by means of a copy of the deed of assignment, or a copy of a confirmatory declaration, signed by both parties and following payment of the due fees.
Licenses: must be in writing and may be granted for the whole or part of the Benelux territory. Recording of license agreements is advisable to ensure opposability to third parties and can be done by means of a copy of the license agreement, or a copy of a confirmatory declaration, signed by both parties and following payment of the due fees. In the event of infringement, a licensee is able to bring an independent action for compensation, with the authorization of the holder.
Copyright laws: a design being “original” (a marked artistic character) can in addition enjoy the longer protection afforded by the National Copyright Legislations (there is no Benelux Copyright Law). Furthermore, the transfer of the copyright on a design automatically implies the simultaneous transfer of the rights on the design and vice versa.
Marking: optional, “Gedeponeerd Model”, “Modèle déposé”.
Refusal of Protection after Registration
The courts may deny protection to: (1) a design or model which is not new or has no individual character; (2) a design or model which is contrary to morality or public order in one of the Benelux countries; (3) shapes indispensable for the achievement of a technical result; and (4) the deposit which does not sufficiently disclose the characteristics of the design.