Key Features Of The Benelux Trademark Law Reform

As of June 1, 2018, the Benelux Convention on Intellectual Property (BCIP) has been amended giving the Benelux Office for Intellectual Property (BOIP) new prerogatives. Roberto d'Erme, European Trademark and Design Attorney at Dennemeyer & Associates, explains how the new rules will impact the region's trademark practice.

The reformed Benelux Convention on Intellectual Property (BCIP) has introduced new rules that are likely to result in increased legal certainty, protection and economic advantage for trademark owners (the BCIP has been amended by Protocol 21-05-2014 and Protocol 16-12-2014, and entered into force on June 1, 2018).

On the other hand, those amendments will expose registered trademarks to be disputed more easily. This will call for trademark owners to use the highest diligence in managing their portfolios. It is therefore essential to understand in which way the trademark reform will impact the rights owners.

The main features of the reformed convention concern:

The centralization of the appeals filed against the BOIP regarding refusals and oppositions, in the hands of the Benelux Court of Justice; The expansion of the grounds of opposition; The non-exclusive competence of the BOIP to receive cancellation requests. Centralization of the appeals

The centralized competence will have a direct impact on many businesses in Benelux. So far, companies filed trademark applications through a single procedure at the BOIP, having direct effects in the three member states. However, when it came to introducing an appeal against the BOIP's decisions on refusals or oppositions, this could have been done only at national level, before the courts sited in The Hague, Brussels and Luxembourg. All that caused different legal deadlines, procedural rules and case law, which often gave rise to different decisions. Another consequence was the occurrence of the so called "forum shopping," whereby a case was brought before the court from which the plaintiff considered to obtain the most favorable decision.

This reform is about to bring more legal certainty and consistency as to the interpretation and application of the IP rules and policies throughout Benelux. This would also impact the companies' investments and budgets allocated for their IP assets since legal consistency is supposed to lower the risk of similar cases being treated differently. The Benelux Court of Justice has its seat in Luxembourg, although the Court Registry is in Brussels at...