Second round of changes in Benelux Trademark law

An amended Benelux Convention for Intellectual Property (BCIP) implements the new European Trademark Directive no. 2015/2436 and will enter into force this March 1, 2019. The upcoming changes will further align trademark law in the Benelux with the EU trademark practice, which may lead to new possibilities for Benelux trademark owners. 

  • Representation of the trademark

The former requirement of graphical representation has been replaced by the more flexible concept clear and precise representation. The omission of the graphic representation requirement will make it possible to represent “non-traditional” trademarks such as sounds, multimedia or holograms.

  • Introduction of certification marks

Besides the existing individual and collective trademarks, the certification mark is introduced. In fact, the former yet largely described Benelux collective trademark is now split up in collective trademarks (generally used by a specific group of enterprises, such as members of an association) and certification marks (given for compliance with defined standards, irrespective of any membership). A transitional period will be foreseen during which the owner of a former collective trademark may decide to switch to the regime of a certification mark.

  • Additional grounds for refusal

The BOIP will from now on be able to refuse, ex officio, trademark applications on the basis of earlier existing designations of origin, geographical indication, guaranteed traditional specialties and plant breeders’ rights. In addition, the absolute grounds for exclusion from registration that previously applied exclusively to the shape will now include any other characteristics of the sign. These new grounds may also be used to obtain invalidation of a Benelux registration before BOIP.

  • Extension of rights of Benelux trademark owner

The amended Convention explicitly grant owners of a Benelux trademark the right to act against use of the mark in a commercial or company name, against certain use in comparative publicity and against goods in transit.

  • New exceptions to Benelux trademark right

In addition to the existing limitation of exclusive rights, a Benelux trademark owner will no longer be able to react against use of a non-distinctive sign or indication. Also, the exception of referential use has received a broader description.

At your service

Your contact person at Kirkpatrick  will inform you in every separate case of the particularities and nuances of each of these or other changes. In case you would have any questions, please do not hesitate to contact us.