On 1 March 2109, the amended Benelux Convention on Intellectual Property ("BCIP") implementing the Trade Marks Directive (EU) 2015/2436 ("Directive") came into force. Note that there is no transitional period.
Since 1 June 2018 it is possible to request the invalidation or revocation of a trade mark before the Benelux Office for Intellectual Property ("BOIP") (article 2.30bis BCIP). These new administrative proceedings make it possible to request the invalidation of a trade mark due to lack of distinctiveness or because of a conflict with an earlier mark. Furthermore, the revocation of a trade mark can be requested based on non-use. Since 1 June 2018, parties can choose if they want to start proceedings before the court or the BOIP.
An important addition is that as of 1 March 2019 it is possible to request the invalidation of a trade mark based on bad faith.
Ahead of the implementation of the Directive it has been possible, since 1 June 2018, to bring an opposition for dilution where a trade mark has a reputation. Now that the Directive is implemented in the BCIP, there are several new grounds on which an opposition can be based. The first ground is that a trade mark holder can act against an agent or representative that submits an application for a trade mark or uses it without the permission of the trade mark holder. Furthermore, the provisions regarding the overlap of trade marks and protected geographical indication will be broadened. This makes it possible for the applicant to invoke an earlier application for a geographical indication or indication of origin in opposition proceedings.
It is no longer required that a mark is represented graphically (article 2.1 BCIP). As of 1 March 2019 the requirement is that a sign has to be represented "in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection offered to the trade mark holder". According to the BOIP, this will create more possibilities for the registration of, for example, sound and motion marks via MP3 or MP4 files.
The rights conferred by trade marks are strengthened on several points. For example, since 1 March 2019 a trade mark holder is able to act against the use of the trade mark as a trade or company name or part of a trade or company name and against the use of the trade mark in comparative advertising in a manner that is contrary to Directive 2006/114/EC. These examples follow from case law and are now incorporated into law.
The strengthening of the rights conferred by the trade mark is offset by the fact that the limitations and defences are also extended. The trade mark holder has to permit the use of non-distinctive signs or indications. Also, the defendant can demand that the trade mark holder submits evidence that shows that the trade mark has been used before the initiation of the proceedings and also before the filing date of the defendant's trade mark (article 2.30quinquies BCIP).
Written by Manon Rieger-Jansen, Sabrina Lodder