Amendments to the Benelux convention on Intellectual Property

The Benelux Convention on Intellectual Property (BCIP) has been amended as of June 1st. The Benelux Office for Intellectual Property (BOIP) will have new prerogatives as revocation and invalidation actions can be brought before it and the Benelux Court of Justice (BCJ) is now the competent body for appeals against the decisions of the BOIP.

1. New proceedings before the BOIP

The BOIP is now authorised to rule on invalidity claims based on absolute grounds, meaning that a trademark may be declared invalid because it has lost its distinctive character. The BOIP can also revoke a trademark if it has not been put to genuine use during a period of at least five years.

This new proceeding will be very similar to the opposition procedure with time-limits of two months, same language regime and final say for the defendant. The costs will be limited compared to the traditional court proceedings: the official cost is EUR 1.400 + additional fees for claims involving more than 3 trademarks.

The current possibility to bring the matter before the courts of Member States of the Benelux remains and may be a good option if your main goal is to delay a decision on the validity or the revocation of a trademark.

A new ground for opposition has been implemented for the owners of well-known trademarks acting against later similar trademarks for non-similar goods and services, which take unfair advantage of, or are detrimental to, the distinctive character of the well-known trademark. This possibility which already exists for EU trademark owners before the EUIPO is now possible in Benelux as well.

2. New appeal procedure before the BCJ 

Before June 1st, all appeals against decisions of the BOIP in relation to a refusal to register a trademark (absolute grounds) and in relation to an opposition (relative grounds), were brought before the courts of appeal of Brussels, The Hague or Luxembourg. The jurisprudence was starting to differ from country to country, generating a risk of “forum shopping”. The centralization of appeals is a good remedy to avoid this.

The Second Chamber of the BCJ, which is composed of judges from the national courts of appeal of the Benelux Member States, will rule on all appeals against the BOIP’s decisions. The BCJ is located in Luxemburg.

This new system is very good news for the Benelux as it simplifies the current system while ensuring consistency of the Benelux trademark law.

Laure Chemla, Senior Associate, laure.chemla@cms-dblux.com