31 January 2019
New fee structure – ‘One tax per class’
As of January 1, 2019, the Benelux Office for Intellectual Property (BOIP) changed its tariffs for trademark applications and renewals to a ‘one tax per class’ structure and therefore some of our fees for 2019 have increased as well, as indicated in the below table:
Further implementation of the TM Package
As of March 1, 2019, the Benelux Convention on Intellectual Property (BCIP) will be amended in accordance with the new EU Directive to approximate the laws of the EU member states. Further to the introduction of administrative revocation and cancellation proceedings before the BOIP, which has been possible since June 1, 2018, some further changes will apply as of March 1, 2019, including without limitation:
- The abolishment of the requirement of ‘graphical representation’ of a sign, which opens up the possibility or at least facilitates the filing of multimedia marks, holograms, motion marks, etc.;
- The absolute grounds for refusal of shape marks have been broadened to also include other characteristics;
- The introduction of new absolute grounds for refusal (among others plant variety rights);
- Bad faith has been introduced as a ground for filing an administrative cancellation action; and
- The notion of collective marks has been split up into certification marks and collective marks.
As of June 17, 2019, the Canadian trademark system will change drastically. Most importantly, Canada will (finally) become a contracting party to the Madrid Protocol and, hence, will be available to designate in an International application.
Other changes may however (significantly) affect your existing Canadian trademark registrations. First and foremost, the term of registration will reduce from 15 to 10 years. This change affects all new and pending applications the registration fees whereof are paid on or after June 17, 2019 as well as all Canadian trademark registrations that are due for renewal on or after June 17, 2019. For these latter marks, the changes will have effect only at the time of renewing such registration.
Furthermore, as of June 17, Canada will adopt the Nice Classification which requires all new and pending applications to be classified into the 45 international classes. When renewing a Canadian trademark registration on or after June 17, the goods and services must also be properly classified according to the Nice classification, hence entailing additional costs.
Considering also that a fee-per-class system will be introduced and that renewal taxes (even for one class) will in any case increase, you might contemplate already renewing your existing Canadian trademark registrations that are due for renewal only after June 16, 2019. This way, you may avoid the increased fees for filing on a per-class basis and for the classification of the goods and services.
Since August 10, 2018, the Mexican Law of Industrial Property requires trademark owners to file a declaration of actual and effective use (i) within a three-month period following three years counted from the registration date of the trademark and (ii) at the time of filing for renewal of the trademark registration. Failure to do so will result in the registration being cancelled from the register.
Holders of International Registrations containing the designation of Mexico must also file a declaration of actual and effective use of the mark, and this (i) within a three-month period, following three years counted from the date on which protection was granted in Mexico and (ii) within three months following the notification of the renewal of the International Registration by WIPO.
We shall of course not fail to timely remind you if a declaration of actual and effective use should be filed for any of your current trademark registrations in Mexico.
For your complete information, please note that Declarations of Use should also be filed in the United States of America, Puerto Rico, Haiti, the Philippines and Cambodia in order to keep your trademark registration(s) alive.
Although nothing is certain at this moment we would like to remind you that, on January 16, 2019, the UK Intellectual Property Office updated its guidance with information on the future of trademarks and designs if there’s no Brexit deal.
According to this guidance, the UK government will ensure that your existing registered EU trademarks or registered Community designs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registered in the UK. The UK Intellectual Property Office will notify you that a new UK right has been granted by publishing a notification and guidance on its website. If you do not want to receive a new comparable UK registered trademark or design, you will be able to opt out.
If you have a pending application for an EU trademark or a registered Community design at the point of exit, the guidance provides that you will be able to refile, within nine months from the date of exit, for a UK equivalent right, retaining the EU application date for priority purposes. It is important to note that, in the case of a pending application, you will not be notified of the start of this nine-month period and that you will thus need to consider whether you actually want to refile with the UK Intellectual Property Office to obtain protection in the UK.
Should you wish to receive our professional assistance and advice as regards your intellectual property rights, please do not hesitate to contact one of our qualified Benelux and European attorneys or to visit us at our offices.
 The new fees are valid as from January 1, 2019 and may be changed without prior notice. The amounts are in euro and without VAT and include among others the official BOIP taxes.