A new Benelux Convention on Intellectual Property (BCIP) as of June 1, 2018

On June 1, 2018 two protocols amending the BCIP will enter into force, namely:

• The Protocol of May 21, 2014 which centralizes appeals filed against decisions of the Benelux Office for Intellectual Property (BOIP), including refusal and opposition decisions, with the new Second Chamber of the Benelux Court, and
• The Protocol of December 16, 2014 amending the BCIP regarding opposition and introducing administrative cancellation and invalidation procedures against registered trademarks.

Under the old regime, appeals against the decisions of the BOIP had to be filed with the Courts of Appeal of Brussels, The Hague or Luxemburg, which had led to some discrepancy in case law. With regard to refusals for example, judges in Brussels seemed more liberal than their colleagues in The Hague who were more often aligned with the relatively strict refusal policy of the BOIP. By making the Benelux Court the sole competent appeal instance, these discrepancies should become moderated and hopefully for trademark holders, the Benelux Court will adopt a more reasonable policy which would allow intrinsically weaker marks to be registered and to acquire a higher degree of distinctiveness through use.

With regard to opposition proceedings, the new BCIP will now also allow holders of trademarks with a reputation to oppose to the registration of younger marks. Currently, opposition can only be based on an identical trademark, a confusingly similar trademark or a well-known mark. Given that the latter presents a particularly high threshold, the recognition of reputed trademarks as sufficient basis to oppose similar trademarks applied for in relation to (dis)similar goods and services provided they cause dilution, tarnishment or free-riding without due cause, is a very welcome change.

The entry into force of the new BCIP also makes it possible to seek invalidation or cancellation of registered marks with the BOIP in administrative procedures. It will, therefore, no longer be required to initiate judicial proceedings, which are often more expensive and hence presented a higher threshold for taking contentious action. More in particular it will be possible to invalidate a trademark on absolute (lack of distinctiveness) and relative (earlier rights) grounds and to cancel trademarks which do not comply with their use obligation.

These additional administrative procedures put the BCIP on par with the EU Trademark Regulation in terms of the remedies it provides. However, as pointed out above, appeals filed against the decisions regarding invalidation or cancellation actions will be subjected to the competence of the Benelux Court, meaning that there will be no administrative appeal as is the case with European Union Intellectual Property Office.

In conclusion the new BCIP is not a case of old wine in new bottles; rather it could have a drastic impact on the daily trademark practice in the Benelux region. The new remedies and the resulting lower thresholds may result in more trademarks being the subject of an invalidation or cancellation action if their distinctive character or genuine use is questionable. To evaluate the impact of these changes and identify possible risks, we would be happy to audit your trademark portfolio. In any case, we will keep you informed about the introduction of the new BCIP and about practical aspects of the new administrative procedures before the BOIP.