Procedural changes at the Benelux Office for Intellectual Property and their impact

28 November 2013

On 1 October 2013, important procedural changes came into effect in the Benelux. These changes form part of a global initiative and work plan of the Benelux Office for Intellectual Property (BOIP) to improve the quality, efficiency, reliability and user-friendliness of its services, and to harmonise and modernise the procedures.

These modifications affect all users of the Benelux trade mark system. The most significant changes to day-to-day practice are:

  • The BOIP amended the method for calculating the opposition period, affecting the duration of the opposition period. The opposition period of two months was calculated from the first day of the month following publication of the application but will now be calculated starting from the actual date of publication, decreasing the opposition period from a possible almost three months to a fixed two months. Opponents will need to react more swiftly and the negotiation period preceding the launch of an opposition will be reduced. 

  • The cooling off period and suspension of opposition proceedings on joint request has been extended to four months, as well as any prolongation thereof. This modification is the result of a survey on the evaluation of the opposition proceedings conducted by the BOIP. Previously, the opposition could only be deferred for a period of two months, which was considered an inadequate period of time for the parties to find an amicable solution. The extension to four months answers this concern, and will in most cases also result in decreased costs for the extension of the deadlines. 

  • The BOIP has simplified the procedure for the renewal of trade mark registrations, which will speed up and reduce the costs of this process. The renewal of a trade mark used to be subject to two requirements: a written request for renewal and the payment of the related fees. The BOIP also re-examined the list of goods and services at the time of renewal. Payment of the official fees through an online payment tool available on the BOIP’s website will now suffice to renew the registration, without any reexamination of the classification by the BOIP. 

  • English is adopted as the third working language of the BOIP, in addition to French and Dutch. Any business with the BOIP can now be conducted in English. This will expedite the communication process for foreign companies, reduce related translation costs and limit the risk of mistakes through translations. 

Further changes are under discussion, such as the extension of the grounds for opposition against a trade mark application and the centralisation of the appeal procedure of the BOIP’s decisions before the Benelux Court of Justice. Currently, appeals are dealt with by the national courts, resulting in disparate case law between the countries, legal uncertainty and forum shopping. All in all, a work in progress, but progress has already been made!

This article is part of the BrandWrites Newsletter for November 2013