The Benelux trademark regime will be amended as of 1 June 2018. One of the key changes is that the Benelux Court of Justice will exclusively hear all appeals against decisions of the Benelux Office for Intellectual Property (BOIP). In addition, revocation and invalidation actions can be brought to the BOIP and a new ground for opposing a Benelux trademark application will be introduced.

These changes aim to achieve a more consistent treatment of Benelux trademark matters in all Benelux countries, a less costly and faster way of attacking existing trademarks, and more possibilities to oppose trademark applications. This will make it easier to attack Benelux trademark applications and registrations. Companies are therefore advised to reconsider their trademark protection strategy.

Benelux Court of Justice to handle appeals from BOIP decisions

Appeals against all BOIP decisions - including opposition decisions and refusals of trademark registrations - are currently handled by the national courts of appeal in The Hague, Brussels and Luxembourg. From 1 June 2018, the Second Chamber of the Benelux Court of Justice will exclusively decide on appeals against all final BOIP decisions. The Second Chamber consists of judges from the national courts of appeal that currently handle these types of cases.

This new system will do away with the discrepancy in appeal decisions between the various national courts, and result in more consistent and harmonised case law. The appeal process will also likely become quicker and cheaper.

BOIP to handle cancellation procedures

In anticipation of EU Trade Mark Directive implementation, the BOIP will also have the authority to rule on revocation (on the basis of "non-use") and invalidation actions (both on relative and absolute grounds). The possibility of bringing these actions before the national courts of the Benelux countries will remain. Appeals from the BOIP decisions will be brought before the Benelux Court of Justice.

Again, this new procedure for attacking an existing trademark will promote more consistent case law as well as a relatively fast and easy administrative procedure in addition to regular court proceedings.

Oppositions based on trademarks with a reputation

Benelux trademark applications can currently be opposed on the basis of: (i) identical trademarks filed for identical goods or services, or (ii) identical or similar trademarks filed for identical or similar goods or services, where a likelihood of confusion exists. The new regime adds the possibility of opposing an application for a similar trademark (filed for similar or dissimilar goods or services) on the basis of a trademark which enjoys a reputation in the Benelux territory. For a successful action, use of the later trademark would - without due cause - have to take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

For changes to the Benelux Convention on Intellectual Property click here (in Dutch only). For the text in English, but without the most recent changes, click here.