The amended Benelux trademark law entered into force on 1 March 2019

The Benelux Convention on Intellectual Property (‘BCIP’) was adapted to the new European Trademark Directive no. 2015/2436. These amendments entered into force on 1 March 2019. Below is a brief overview of some of the important innovations.

Requirements for trademark registrations

An important change for the trademark practice concerns the new requirements for trademark registrations in the Benelux (and for that matter also for EU trademarks).

Following the IP-Translator judgment of the Court of Justice (ECJ, C-307/10, 19 June 2012), the BCIP now also provides that the goods and services for which trademark protection is sought, must be clearly and precisely described. This means that the applicant has to select immediately all the correct (sub)categories of goods and services when registering your trademark.

The designation of a general class heading will from now on (almost always) be insufficient.

Another novelty is that, as of 1 March 2019, the legislator has made it possible to register a sign that is not visible or is difficult to capture in a 2D image – for instance a sound mark - as a sign no longer has to be 'susceptible to graphic representation'.

Certification mark

Also as of 1 March 2019, a so-called "certification mark" can be registered (now also in the Benelux).

A certification mark guarantees that certain goods or services meet specific characteristics in terms of quality requirements, production process, etc., which have been certified by the trademark holder. An example is Fairtrade. In this case, the trademark holder can only be an independent 'inspection authority’.

The possibility of registering a so-called "collective trademark" also remains. A collective trademark indicates that the protected goods or services originate from members of a certain association, whereby only the members of the association may use the collective mark for their goods or services. A typical example is Keurslager.

Your rights as a trademark holder

Finally, as of 1 March 2019, the rights of the trademark holder will be strengthened in several respects. This makes it procedurally easier to act against:

(i) the use of a trademark in comparative advertising;
(ii) the use of a trademark as a trade name;
(iii) preparatory acts in the event of imminent infringement; and
(iv) counterfeit goods in transit.

Attention: from now on, the trademark holder can no longer act against purely descriptive signs or other indistinctive signs of third parties.

Additional cancellation procedure

We would like to iterate that a new, fast and relatively cheap administrative cancellation procedure has been in place before the Benelux Office for Intellectual Property since 1 June 2018. This makes it possible to obtain the cancellation of a conflicting trademark registration outside of the judiciary framework.