Is the registration procedure in Benelux compatible with the harmonisation Directive 89/104/EC?

25 April 2007

Benoit Van Asbroeck, Laurent Masson

On 29 June 2006, the Benelux Court of Justice (the Benelux Court) handed down a judgment related to the procedure set out in articles 6 bis and 6 ter of the uniform Benelux Trade Mark law (currently articles 2.16 and 2.17 of the Benelux Intellectual Property Treaty) for appealing, either to the Court of Appeal of Brussels, the Court of The Hague or the Court of Appeal of Luxemburg, against a decision to refuse the registration of a trade mark by the Benelux Trade Mark Office (now the Benelux Office for Intellectual Property (the BOIP)).

In this ruling (Bovemij Verzekeringen N.V., “Europolis” case, n° A/2005/1), the Benelux Court held that the seized Court may take into consideration new facts and additional evidence (such as acquired distinctiveness through use) when deciding the validity or otherwise of the refusal by the BOIP to register the application. However, the Benelux Court stated that the applicant may not make any such new factual claims if the aim is to obtain an order for a partial registration or for a registration with restrictions, which would deviate from the application as examined by the BOIP.

This last point is a confirmation of a previous ruling of the Benelux Court dated 15 December 2003 (Vlaamse Toeristenbond, n° A/2002/2). Here, the Benelux Court ruled that when the BOIP has not assessed the distinctive character of the mark in relation to each individual product and service (but has merely refused registration globally for all of the goods and services for which the mark was filed), the seized Court cannot order the BOIP to proceed with the registration of the mark for those goods and services for which it considers that no grounds for absolute refusal exist.

However, by decisions of 30 May 2005 (regarding the application for ‘the Kitchen Company’) and 1 June 2006 (regarding the application for ‘Global Financial Intelligence’), the Court of Appeal of Brussels put several preliminary questions to the European Court of Justice (ECJ) as to the compatibility of the legislative framework described above with, among others, article 13 of the Directive 89/104/CE. Particularly since this last provision states that if a reason for the refusal of a registration only exists for part of the goods and services for which the trade mark has been filed, the refusal extends only to those specific goods and services.

The ECJ answered the questions raised in the first case in its judgment of 15 February 2007 (C-239/05, ‘The Kitchen Company’), whereby it ruled (in substance) that:

  • when refusing registration of a trade mark, the competent authority is required to state in its decision its conclusion for each of the individual goods and services specified in the application, regardless of the manner in which that application was formulated;

  • Directive 89/104/CE does not preclude national legislation which prevents the court reviewing the decision of the competent authority from ruling on the distinctive character of the mark separately for each of the individual goods and services specified in the application, where neither that decision nor that application related to categories of goods or services are considered separately.

These answers may, to a certain extent, appear contradictory and we await with interest the decision of the ECJ on the questions raised in the Global Financial Intelligence case.

In the meantime (and in case of possible litigation with the BOIP as to the validity of the trade marks applied for) it is recommended that trade mark applicants:

  • set out in their initial application for registration of a trade mark all the individual goods and services for which registration is sought, for each of the classes concerned; and

  • file, in their objection to a provisional refusal to be lodged with the BOIP, a subsidiary application for registration only of the goods and services in respect of which the BOIP should consider that the mark applied for has a distinctive character.