21 Jan Change to trademark law in the Benelux as of 1 March 2019
With the United Kingdom threatening to leave us, the rest of Europe is coming together a little more closely. At least in terms of trademark law. The member states of the European Union had until 14 February 2019 – how romantic! – to convert Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks into national law. With special thanks to the Kingdom of Belgium, the member states missed that deadline by a whisker. Trademark law in the Benelux changed as of 1 March 2019. Here are the most important changes:
- The requirement concerning a graphic reproduction of a trademark has been scrapped. We no longer have to submit a jpeg to describe a trademark. That means the catchy “bo-bo-bo-bo-bo-bol.com” jingle can be submitted as an MP3 file and at last the NOKIA hands can be submitted in a video file. This opens up the door to creative minds: if you know a way to describe a scent clearly, accurately, independently, accessibly, comprehensibly and objectively in a way that will stand the test of time, feel free to contact us!
- The owner of a trademark now has more rights. Comparative advertising can be considered a breach of trademark more readily. Taking action against goods in transit can be done more quickly. Preparatory actions (such as packaging with trademarks on that is already at hand) can constitute a breach of trademark. Dictionaries have to state that some words are trademarks, such as: “Googling does not just mean searching the internet. Google is also a registered trademark”. And we can have trademark applications by a rogue commercial agent overturned.
- There is a new type of trademark, known as the certification mark, which is distinct from the collective mark. Anyone filing a certification mark will also have to submit rules for use determining when goods or services comply with the conditions for use of the trademark. The best-known example of this is the ‘Woolmark’, which can only be used if an article is made of 100% pure virgin wool. A collective mark is a trademark used by various members of an association, such as the ‘keurslager’ mark for quality butchers in Belgium and the Netherlands.
- The Benelux Office for Intellectual Property (BOIP) has changed its fees. Since January 2019, a fee has been charged for each class (in contrast to the former system of “3 classes for the price of 1”). That makes an application in a single class €4 cheaper. Great news! Or maybe not, if you need more than one class. Although all applicants want protection that is as wide-ranging as possible, we believe it is a good thing that a trademark register is no longer flooded with applications in unnecessary classes.
- Since June 2018, we can approach the BOIP for a cancellation procedure. Whereas a procedure to revoke a registered trademark used to always have to be conducted through the national courts, this can now be done more simply, more quickly and for a cheaper price with the BOIP (in much the same way as with the EUIPO). In short, this is a development that we can only applaud.