Trade and Service Marks

– Benelux Convention on Intellectual Property (including its Implementing Regulations 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 and adapted to the Directive 2004/48/EC on the enforcement of intellectual property rights. It replaces the previous legislation and all articles of the law have been renumbered.
– The Protocol of August 28, 2009 of the adaptation of the Implementing Regulations to the BCIP, which modified the Articles 1.32, 1.33, 4.5 and 4.12.
– The Protocol of July 22, 2010 of the adaptation of the BCIP, which modified the Articles 2.9, 2.14 and 2.18, and introduced Article 4.4bis.
– The Protocols of June 22, 2012 and March 22, 2013 of the adaptation of the Implementing Regulations to the BCIP.
– The Protocols of July 4, 2016 and July 5, 2016 of the adaptation of the Implementing Regulations to the BCIP.
– The Protocol of September 28, 2017 of the adaptation of the Implementing Regulations to the BCIP.

Membership in International Conventions

The Benelux countries of Belgium, Luxembourg and The Netherlands are, inter alia, parties to:
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Madrid Agreement Concerning the International Registration of Marks.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
– Convention Establishing the World Intellectual Property Organization (WIPO).
– WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
– The Benelux is a member State for the protection of the European Union Trademark.
– Luxembourg and The Netherlands are members of the Vienna Agreement on the International Classification of the Figurative Elements of Marks.
– Trademark Law Treaty (TLT), since August 11, 2012, following last ratification by Luxembourg.
– Singapore Treaty on the Law of Trademarks, since January 8, 2014.

Filing

Application: may be filed at the Benelux Office for Intellectual Property in The Hague or the national administrations in The Hague, Brussels or Luxembourg. 

Foreigners and nationals not living in the country: 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. 

Kind of trademarks: individual or collective. 

Service marks: registrable.

Classification: international (Nice Agreement). 

Multi-class applications: possible. The basic fee covers three classes. 

Claiming of Convention priority: may be filed at the moment of the application and until one month thereafter (under the condition of making a special statement with the Office). A copy of the priority application is required with the application (certification of the priority document is not required).

Filing requirements for an application (to be sent to resident agent), the filing of a Benelux trademark 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. The (type of) trademark with at least 1 reproduction of the trademark if it is a device mark;
3. An indication of the color(s); where appropriate, accompanied by the corresponding color code;
4. The list of goods and services, with an indication of the international classes;
5. For collective trademarks, the regulation of use and control;
6. The signature of the applicant or his agent;
7. Information about the Convention priority, and a copy of the priority application (this document may be filed after the application).

Examination Procedure

A formal examination as well as objections on absolute grounds (inherent registrability) are made by the Benelux Office for Intellectual Property. The applicant is informed of the (provisional) total or partial refusal and a response can be filed within a maximum term of six months (first deadline of three months, followed by an automatic extension of one month, which can be extended for another two months upon written request). Against a (definitive) partial or total refusal of the registration, an appeal before the Courts of Appeal in Brussels, The Hague or Luxembourg is possible within two months following a decision on a refusal. The Office is not entitled to refuse, on its own initiative, the registration of a trademark on the basis of prior existing rights. 

Disclaimers: not available.

Opposition to the granting of the registration is possible at the latest two months (extensions not available) after the publication of the application in the online Benelux Trademarks Register or, with regard to international (Madrid) trademarks which cover the Benelux, in the International Gazette. The opposition system was progressively introduced on the basis of the classes covered by the application. The opposition procedure is now fully applicable and all trademark applications filed as from January 1, 2006 can be opposed. The opposition procedure may be suspended upon joint request of the parties for a period of four months (extendible by the same period each time). Each party may, at any time, request that suspension be discontinued.

Granting

Registration: if there are no objections made on absolute grounds, and no opposition is filed against the application, or if an objection and/or opposition are/is successfully overcome, registration is granted. It is possible at any time, upon payment of an additional fee, to request an accelerated registration, which can very rapidly be obtained (normally within twenty-four hours). In this case, examination on absolute grounds and opposition will take place thereafter. The registration may subsequently be cancelled based on absolute or relative grounds. 

Beginning of protection: date of application, provided that the trademark is registered. 

Duration: ten years from the date of application.

Renewals: the registration may be renewed for further periods of ten years and renewal may be applied for within six months before the expiration of the current period or within a grace period of six months after the expiry date upon the payment of an additional renewal fee; same requirements as for the application for registration.

Use: is compulsory. If a mark is not genuinely used within five years from the date of registration or thereafter during an uninterrupted period of five years, it may be subject to cancellation following a court action filed by an interested party. Reinstatement is possible in the case of resumption of genuine use. However, any use, which started less than three months before the filing of a request for revocation will not be taken into account if the holder started preparations for the resumption after he took note of the request for invalidation.

Marking of registered goods: not compulsory. 

Text of marking: any text is acceptable, recommended are e.g. “Marque déposée”, “Gedeponeerd Merk”, symbol ®. 

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 not 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.

Security: possible, but not mandatory. It is advisable to record them to be enforceable against third parties. 

Re-registration of non-renewed trademarks: re-registration of a mark by a third party within a two-year period after said registration has elapsed, can under certain conditions be invalidated.

Refusal of Protection after Registration

Invalidation: any interested party, including the Public Prosecutor, may invoke the nullity of the registration, the registration may consequently be invalidated by the courts if the mark is: (1) a sign which is not distinctive (i.e. devoid of any distinctive character or descriptive), misleading or became the usual denomination of a product or service; (2) contrary to public order or morals; (3) falling within the provisions of Article 6ter of the Paris Convention; (4) similar/identical to a prior individual or collective trademark registered for similar/identical goods or services; (5) similar to a trademark with a reputation in Benelux for (non-)similar goods or services (anti-dilution provision); (6) similar to a well-known trademark (in meaning of Article 6bis of the Paris Convention); (7) registered mala fide; (8) not in normal use within five years from the registration date or if the use is interrupted for five consecutive years; (9) registered for wines or spirits and includes a geographical indication for wines or spirits which do not have that origin.

Acquiescence

If the owner of a trademark has tolerated the use of a younger registered trademark during a continuing period of five years while being aware of it, he may not, on the basis of his prior rights, request the revocation of the younger registration, except in the case of bad faith.

European Union Trademark (EUTM) Conversion

Filing requirements for the conversion of an EUTM into a Benelux trademark:
1. Copy of the decision concerning the withdrawn or rejected EUTM application;
2. A translation into French, Dutch or English of the request for conversion and the attachments;
3. The name and address of the applicant for conversion, i.e. the proprietor of the trademark and the name of the representative, if any. The applicant must choose a domicile in the EU or EEA. For the applicant without a place of residence, registered office or agent, a correspondence address in the EU or EEA will suffice;
4. Payment of the prescribed national application fee.

Time limit: three months from (1) the date on which the application for the EUTM has been withdrawn or the registration of the EUTM has expired; or (2) the date on which the decision of the national jurisdiction (deciding that the EUTM ceases to produce its effects) came into force. The documents mentioned under 1 to 4 must be provided within one month. The period may be extended ex officio and will be extended on request, but with a maximum of six months after the date on which the first notification was sent.