As of June 1, 2018, a number of changes to the Benelux Convention on Intellectual Property (BCIP) will come into effect. The changes will make it easier for holders of earlier trademarks and other interested parties to oppose the filing of a Benelux trademark or to contest the validity of a registered Benelux trademark.
The changes are, amongst others:
1. Expansion of the grounds that can be invoked in the already existing opposition proceedings; and
2. A new administrative revocation- and invalidity procedure outside court.
Reputation of older trademark becomes ground for opposition for younger trademark
From the date of its entry into force, it is now possible in opposition proceedings with the Benelux Office for Intellectual Property (BOIP) to rely on the reputation of a trademark. In other words, it is now also possible to rely on the third ground (sub c) mentioned in Article 2.3 of the BCIP, which allows the holder of an earlier registered trademark with reputation, to oppose, under certain circumstances, the registration a younger trademark, also for dissimilar goods or services.
New invalidation procedure without involving the court
The second amendment concerns the introduction of a new administrative procedure (is somewhat similar to the opposition procedure) with the BOIP, in which invallidity or revocation can be claimed. Currently, trademark holders are still forced to request invallidity or revocation of a trademark through legal proceedings. With the introduction of this simplified administrative procedure with the BOIP, claiming invallidity or revocation of a trademark becomes easier. This does not alter the fact that the validity of a registered trademark can still be disputed through court.
Questions?
If you have any questions regarding your IP rights in the European Union, please do not hesitate to contact us.