Background
In 1965, the treaty establishing a Benelux Court of Justice was signed. It entered into force in 1975. The Court, composed of judges from the highest courts of the three States, has to guarantee the uniform interpretation of common legal rules. This international judicial institution is located in Brussels.
The Benelux is particularly active in the field of intellectual property. The three countries, Belgium, the Netherlands, and Luxembourg (België/Belgique/Belgien - Les Pays Bas/Nederland/Die Niederlande - Lëtzebuerg/Luxembourg/Luxemburg), established a Benelux Trademarks Office and a Benelux Designs Office, both situated in The Hague. In 2005, they concluded a treaty establishing a Benelux Organisation for Intellectual Property which replaced both offices upon its entry into force on September 1, 2006.
Who May Apply?
Any natural person or legal entity may apply for and register a
Benelux trademark.
What Can Be Registered?
The definition of a trademark is so wide that all signs can be
registered, provided they meet the requirements set forth in the Benelux
Convention on Intellectual Property (BCIP), i.e., the sign must
be
- capable of being represented graphically; and
-capable of distinguishing the goods and/or services of an
enterprise.
What Cannot Be Registered?
In addition to those signs which do not meet the requirements set
forth in Article 2(1) of the Benelux Convention on Intellectual Property
(BCIP), certain other signs may not be registered as trademarks,
namely:
(1) marks which are devoid of any distinctive character;
(2) marks which consist exclusively of signs or indications that may
serve, in trade, to designate the kind, quality, quantity,
intended purpose, value, geographic origin or time of production
of goods or the provision of services or other characteristics of
goods or service;
(3) marks which consist exclusively of signs or indications that
have become customary in the current language or in bona fide
and established trade practice
(4) signs which consist exclusively of
- the shape resulting from the nature of the goods themselves;
- a shape of goods necessary to obtain a technical result; or
- a shape which gives substantial value to the goods;
(5) marks which are contrary to public policy or accepted principles
of morality;
(6) marks which can deceive the public, e.g., as to the nature, quality,
or geographic origin of the goods or service;
(7) signs which are liable to create confusion with a well-known
mark within the meaning of Article Gbis of the Paris Convention
and which belongs to a third party that has not authorized
the use of such sign;
(8) signs which consist of or include armorial bearings, flags, and
other emblems of state (Article 2(4)(a) BCIP in conjunction with
Article 6ter Paris Convention); and
(9) marks for wines or spirits which contain or consist of a geographic indication of origin, with respect to wines or spirits
not having this origin.'
The first three absolute grounds for refusal set out above do not apply
where the trademark applicant can prove that his or her sign has
acquired distinctiveness through use before the application was filed.
It must be shown that the trademark has acquired distinctive
character throughout those parts of the Benelux in which grounds for
refusal exist. For marks consisting of one or more words of an official
language of the Benelux, it must be established that the mark has
acquired distinctiveness through use throughout the linguistic area in
which the mark is deemed to lack distinctiveness.
The seventh absolute ground of refusal is linked to the protection
granted to well-known or famous marks under Article Gbis of the
Paris Convention. This protection exists even if the well-known
trademark is not registered but is restricted to trademarks relating to
goods, not services. Article 16 of TRIPS, however, extends this protection
to services marks. Unfortunately, no definition of a well-known
mark is provided in either Article Gbis of the Paris Convention or
Article 16 of TRIPS. Therefore, whether a trademark can be considered
well-known must be determined on a case-by-case basis.
Rights
A trademark registration does not entitle its owner to prohibit a third party from using in the course of trade:
(a) his or her own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographic origin, time of production of the goods or the provision of the service or other characteristics of the goods or service; and (c) the trademark, where necessary to indicate the intended purpose of goods or services, provided the trademark is used in accordance with honest practices in industrial or commercial matters. In addition, a trademark right cannot be raised against the use, in the course of trade, of a similar sign which is protected by earlier local rights in one of the Benelux countries (e.g., copyright). A trademark owner can also not use his or her rights against goods which have been put on the market within the European Economic Area by the trademark owner or with the owner's consent. This is the exhaustion of rights rule.
Filing Requirements
Applications can be filed either on-line or in hard copy, in Dutch or
French.
The following information must be provided in the on-line or paper
application form:
a) the name, address, and, where applicable, corporate form of the
applicant;
b) the name and address of the applicant's representative, if applicable;'
c) the trademark;
d) the goods and services for which the trademark is applied, with
reference to the Nice Agreement classification numbers;
e) the type of trademark, i.e., word mark, figurative mark, a
combined word and figurative mark, a three-dimensional mark
or any other type of mark;
f) a color claim, if applicable, accompanied by the official color references;
and
g) the signature of the applicant or of his or her representative.
For figurative marks, including color marks, sound marks, and 3-D
marks, the mark must be reproduced within the specific box provided
on the application form. Two additional copies of the sign must be
included. The reproduction must be of a high quality in order to allow
scanning. It must be a professional quality print on matte paper in a
square or rectangular format of no more than eight by eight centimeters and at least 1.5 by 1.5 centimeters. All elements of the
trademark must be clearly legible and distinguishable.
A description of the mark not exceeding 50 words, detailing its
distinctive features, can be added.
Seniority can be claimed under the Paris Convention, provided the
Benelux application is filed within a period of six months after the
earlier application.
Applicants that do not have a domicile or registered" office within
the European Union or the European Economic Area must provide an
address within the EU or the EEA.
It is not required to submit a power of attorney with an application.
Evaluation & Review
Upon receipt of an application, the Benelux Office for Intellectual
Property (BOIP) will assess the mark against the absolute grounds of
refusal to determine if it is fit for registration.'
Trademarks registered under the accelerated procedure2 are also
examined on absolute grounds of refusal. The trademark will, in other
words, still be assessed on absolute grounds for refusal after registrationY3b
ut the owner can immediately rely on its registration. The
owner must, of course, take into account the risk of cancellation of its
registration on the basis of absolute ground.
If the BOIP concludes that one or more absolute grounds of refusal
apply to the trademark application, it will temporarily refuse to register
it.
Duration
Trademarks are registered for a term of 10 years, starting from the
filing date. The registration can be renewed indefinitely for subsequent
10-year terms.
As a rule, renewal must be requested and the corresponding fees
paid within a period of six months prior to expiry of the registration.
However, it is possible to request renewal up to six months after
expiry of the renewal deadline, provided an additional fee is paid.
The Benelux Office for Intellectual Property sends a reminder to
trademark owners six months before the renewal deadline.
Use
A registered trademark must be put to genuine use within a period
of five years from its date of registration, unless the lack of genuine
use can be justified with reference to an acceptable cause.
Article 2.26(3) BCIP cites three examples of genuine use:
-Use of a trademark in a manner that differs slightly from the
manner in which it is registered, but which does not affect the
mark's distinctive character;
-Affixing the trademark to goods for export purposes only; and
-Use of a trademark by a third party, provided the trademark
owner has consented to such use.
Domain Names
DNS.BE (www.dns.be) is the administrator of the .be ccTLD. Names
within the .be domain must be registered through an accredited agent.
Applicants are deemed to be aware of DNS.BE's general terms and
conditions, which state inter alia that a domain name should not
violate third-party rights, including trademarks. Domain names are
allocated on a first-come, first-served basis.
Apart from regular proceedings based on trademark law, there are
two specific remedies against the abusive registration of domain
names in Belgium: ADR proceedings and cease-and-desist proceedings.
DNS.BE dispute resolution policy:
Disputes involving .be domain names can be brought before the
Belgian Centre for Arbitration and Mediation, CEPANI. Such
proceedings are swift (they take approximately 55 days) and are
conducted online.
The claimant can request the assignment or cancellation of a
domain name. In order to prevail, the claimant must be able to
demonstrate that (i) the domain name is identical or confusingly
similar to a trademark, trade name, company or statutory name, a
geographic designation, a personal name or the name of a geographic entity in which the claimant has rights; (ii) the domain
name holder has no rights or legitimate interest in the domain
name; and (iii) the holder's domain name has been registered or
used in bad faith.
Bad faith will be found if the circumstances indicate that the
domain name was registered or acquired primarily for the purpose
of selling, renting or otherwise transferring it to the trademark
holder or a competitor of the latter, for valuable consideration and
in excess of the costs directly related to the domain name.
Cease-and-desist proceedings
The Act of June 26, 2003, on the abusive registration of domain
names allows claimants to petition the courts to uphold their rights
in domain names. The act provides for specific cease-and-desist
proceedings, i.e., proceedings on the merits initiated and conducted
with the speed of summary proceedings. The act applies to the
holders of any kind of gTLD or ccTLD residing in Belgium and all
.be domain names.
Article 4 of the Act provides that a registration shall be deemed
abusive (i) when the registered domain name is identical or confusingly
similar notably to a trademark or trade name and (ii) the
registrant has no right or legitimate interest in the name in question
and (iii) proceeded to register or use it for the sole purpose of
harming or unduly deriving profit from a third party.
A permanent and immediately enforceable order to strike or assign
the domain name as well as publication of the decision, if appropriate,
can be obtained. The Netherlands:
The central registry for domains in the .nl ccTLD is SIDN (Stichting
Internet Domeinregistratie Nederland-www.sind.nl). An application
to register a name within the.nl domain must be made through a
registrar. SIDN registers names on a first come, first served basis.
SIDN may, however, reject an application if the registration is
manifestly illegal (which is inconsistent with public order and
decency).
Domain disputes may be referred to the Dutch courts if the parties
fail to resolve the matter. The courts will then determine whether the
domain name should be relinquished or transferred.
SIDN also offers alternative dispute resolution (ADR). The dispute
resolution rules offer a speedy, straightforward, and inexpensive
alternative to judicial proceedings. Disputes are resolved by qualified
independent specialists in the field of domain names and intellectual
property rights. SIDN is not involved in the resolution of disputes.
Participation in ADR does not preclude either party from taking legal
action before, after, or simultaneously with the dispute resolution
procedure.
Luxembourg:
Restena Foundation (www.dns.lu) is the administrator of the
ccTLD.lu. Names within the .lu domain must be registered through
an accredited registrar. Domain names are allocated on a first come,
first served basis.
Conflicts pertaining to domain names which cannot be settled between
the parties must be submitted to the courts. Domain names
referring to Luxembourg cities or regions shall be automatically
refused.
Enforcement
Enforcement proceedings are specific to each of the Benelux
countries. Summary proceedings and proceedings on the merits are
available in Belgium, the Netherlands, and Luxembourg, of course,
but are conducted in accordance with the applicable procedural laws.
Also, proceedings can be specific to one country, such as, e.g., measures
which can be obtained on an ex parte basis. The next paragraphs
provide an example hereof.
Civil remedies:
In the event of trademark infringement, several remedies are available
including injunctions, damages, surrender of profits for bad faith
infringement, supplier information, recall, delivery up of production
and sales data andlor infringing goods and publication of the decision
under certain circumstances. These remedies can be requested either
in proceedings on the merits or in preliminary proceedings, for the
most part.
The Belgian Judicial Code' provides for a specific procedure, the so called
"descriptive seizure" (saisie-descriptionheslag inzake namaak),
which entitles the holder of an intellectual property right, including
trademark rights, to petition the competent court to do the following
on the basis of an ex parte application (i.e., without fist informing the
alleged infringing party):
-Appoint an expert to describe (i) the allegedly infringing goods
and methods as well as (ii) any instruments pertaining directly
to the infringement and all plans, documents, calculations, etc.
which evidence (a) the alleged infringement and (b) the extent of
the infringement;
- Prevent the infringing party from disposing of the allegedly
infringing products generally subject to a penalty. The advantage of this procedure is that it is swift and effective
since the other party is not aware of the requested measures (i.e., the
element of surprise). The expert can moreover examine the accounts
of the alleged infringing party with a view to establishing the existence,
origin, and extent of the infringement.
When an alleged infringer is served with a descriptive seizure order,
it can object by filing a motion to set aside (tierce opposition/
derdenverzet) the court's decision.
The applicant for descriptive relief must, within one month after
submission of the expert's report, bring an action on the merits against
the alleged infringer. If an action on the merits is not commenced
within this time period, the descriptive seizure order shall cease to
have effect.
In the Netherlands, the owner of a registered trademark can petition
the competent court on an ex parte basis to order a bailiff to seize
the infringing goods andlor safeguard relevant evidence and proceed
to make in any place a detailed description of the goods and/or take
evidence, with or without samples. A party who improperly maintains
a request for seizure can be ordered to pay damages.
In Luxembourg, there is no procedure for descriptive relief with respect
to trademarks. However, Article 72 of the Luxembourg Act of
April 18,2001 on copyrights and related rights provides for a so-called
descriptive seizure procedure (saisie-contrefacon). Therefore, in those
rare cases where a trademark is also protected by copyright, the
trademark owner can, in theory, petition the president of the
competent court of first instance (tribunal d'arrondissement) to appoint
an expert to describe any objects relating to the infringement of
the copyright in question.
Criminal sanctions:
In Belgium, the criminal sanctions for trademark infringement are
a prison term of three months to three years and/or a fine of EUR 100
to EUR 100,000.
In the Netherlands, the maximum penalty for trademark infringement
is a one-year prison term or a fine of EUR 67,000. Intentional
infringement on a commercial basis-a new offense targeting professional
counterfeiters--can be punished by up to four years in prison
or a maximum fine of EUR 67,000.
In addition to responding to requests by IP right owners, public
prosecutors may act on their own initiative to protect such rights if
doing so would further a particular public interest.
In Luxembourg, only civil remedies, not criminal sanctions, are
available for trademark infringement. Customs intervention:
When, under the Anti-piracy Reg~lat ionc,~us toms officers detain
goods suspected to violate certain intellectual property rights, the
holder of these rights must take action within three to 10 days to
have the counterfeit nature of the detained goods confirmed. In many
instances, a criminal complaint is filed. There is, however, also a possibility
to start civil proceedings.
In Belgium and the Netherlands, trademark holders can also make
use of a simplified procedure provided for by Article 9 of the Anti-
. piracy Regulation. In brief, this procedure allows the trademark
holder to request the addressee of the counterfeit goods, the person
who submitted the customs declaration, or the holder or owner of the
goods to voluntarily abandon them for destruction. If the person
contacted does not expressly object to destruction of the goods within
the specified time period (three to 10 days), which can be extended by
another 10 days if the circumstances so justify, consent will be deemed
granted. The customs authorities will then be instructed to proceed
with the destruction.