On 1 June 2018, the amendments[1] [1] to the Benelux Convention on Intellectual Property (BCIP), adopted in 2014, entered into force. From 1 June on, new powers are attributed to both the Benelux Court of Justice (BCJ) (1) and the Benelux Office of Intellectual Property (BOIP) (2). Furthermore, a new opposition ground – currently already available to opponents of EU trademarks – is available (3). The implementation of the second EU harmonisation directive is on track but still not in force.
Article also available in French [2], Dutch [3] and German [4].
Centralisation of the appeals filed against the decisions of the BOIP with the second chamber of the BCJ
Until now, appeals against decisions of the BOIP (refusal or opposition decisions) had to be filed before the Courts of Appeal of Brussels, The Hague or Luxemburg, depending essentially on the residence of the trademark applicant.
According to the new article 1.15bis BCIP, the BCJ becomes the unique and central jurisdiction for all appeals against decisions of the BOIP in the framework of its attributions under titles II, III and IV BCIP (trademarks, designs, amendments of registrations and i-depot procedure).
The new competence of the second chamber of the BCJ replaces the current competence of the national courts of appeal as regards these decisions. Further to the intended harmonisation of case law, the centralisation of all appeals before the same court aims at enhancing procedural efficiency.
The appeal period is two months, irrespective of the type of BOIP decision against which the appeal is launched. Whereas the procedure in first instance before the BOIP can be conducted in French, Dutch or English, the appeal is introduced either in French or Dutch. Attention must be drawn to the fact that the choice of language in the appeal proceeding depends, according to article 1.6 of the rules of procedure of the BCJ, not on the language of the procedure in first instance, but on the sole choice of the appellant. Consequently, even if the proceedings before the BOIP have been conducted in Dutch, the appellant will be allowed to launch the appeal in French, and conversely. It is furthermore of interest to note that the rules of procedure do not foresee the possibility to bring incidental appeals before the BCJ’s second Chamber.
The appeal against the second Chamber’s decisions will be brought before the First Chamber for legal review only (analogous to the Dutch Supreme Court “Hoge Raad” and the “Court of cassation” in Belgium and Luxembourg). The First Chamber also retains competence of preliminary rulings concerning questions asked by national courts about the BCIP. Both First and Second Chambers should be entitled to submit preliminary questions to the Court of Justice of the European Union.
Filing invalidity and revocation applications to the BOIP
Until now, invalidity and revocation proceedings had to be filed before Belgian, Dutch or Luxemburg national courts. From 1 June on, the BOIP and the national courts have concurrent jurisdiction.
It is now possible, through an administrative procedure, to obtain the invalidation of a trademark on absolute (a.o. against signs which cannot constitute trademarks, lack distinctiveness, etc.) or relative grounds (a.o. against identical or similar prior trademarks), or to claim its revocation in the absence of genuine use. With these new administrative remedies available under chapter 6bis, the BCIP is now in line with the EU trademarks regulation, which already provides for an administrative procedure before the EUIPO. It will be up to the claimant to launch either a procedure before a national court (ruled by articles 2.27 and 2.28 BCIP) or an administrative procedure before the BOIP (new chapter 6bis, new articles 2.30bis until 2.30quater). Such choice will depend on strategic considerations. In this respect, it is noteworthy that the administrative proceedings are suspended when the trademark on which the invalidity or revocation action is based (article 2.30ter, sub 2.a.iii BCIP) or the trademark against which said action is directed (article 2.30ter, sub 2.b.iii BCIP), is subject to a judicial nullity or revocation procedure. Furthermore, a counterclaim for infringement will not be possible before the BOIP, but only before national courts.
As reported sub (1), as from 1 June 2018, appeals against final decisions of the BOIP in these matters will have to be filed before the second chamber of the BCJ.
New opposition ground: well-known trademarks
Under the previous law, the opponent could only act against an identical or confusingly similar trademark registered for identical or similar goods or services (previous article 2.14, al. 1 BCIP). Today, the BOIP is regarded as having the necessary resources to handle a broader range of opposition grounds. Hence, an additional ground for opposition is made available: the opponent, owner of a well-known trademark, can invoke such trademark to oppose a later trademark even if different goods or services are concerned, subject to the respect of the other applicable conditions. Article 2.14 BCIP was modified accordingly.
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All amendments outlined above entered into force on 1 June 2018 for procedures initiated as from that date. This means, in particular, that the previous article 2.14, al. 1 BCIP (limited grounds for opposition) remains applicable to all opposition proceedings launched before 1 June 2018.
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For any question or assistance, please contact
Emmanuel Cornu and Eric De Gryse
emmanuel.cornu@simontbraun.eu [5]
eric.degryse@simontbraun.eu [6]
+32 (0)2 543 70 80
[1] [7] Protocol of 21 May 2014 and Protocol of 16 December 2014.