What is a Benelux Trademark? Benelux Trademark Review

Basic Introduction

On February 25, 2005, Belgium, the Netherlands and Luxembourg signed the Benelux Convention on Intellectual Property (Trademarks and Designs) (hereinafter referred to as the "Benelux Convention on Intellectual Property"), which replaced the previous Benelux Trademark Convention (1962) and Benelux Design Convention (1966). The Convention came into force on September 1, 2006.

In accordance with the Benelux Convention on Intellectual Property, the three countries established the Benelux Organization for Intellectual Property. The organization is supervised by an Executive Board composed of representatives of the three member states and has the following responsibilities: (1) implement the convention and related implementing regulations; (2) promote the protection of trademarks and designs in the three Benelux countries; (3) perform other tasks instructed by the Executive Board; (4) evaluate and amend the relevant legislation on trademarks and designs in accordance with international, regional and other developments. The organization is headquartered in The Hague.

The Benelux Office for Intellectual Property (BOIP) is an important part of the Benelux Intellectual Property Organization and is responsible for the registration of trademarks and designs in the Benelux region.

Types of Trademarks

A trademark should be a distinctive sign, the most common of which are word trademarks and graphic trademarks, 99% of registered trademarks belong to these two categories. Other types of trademarks that can be registered under BOIP include shape trademarks, color trademarks and sound trademarks:

● In some cases, the three-dimensional shape of a product or packaging may be registered as a trademark, such as a specially designed perfume bottle.

● When people can identify a product or service by its color, even a single color or a combination of colors can be registered as a trademark, such as the blue color of a camping gas canister.

● Advertising music is sometimes so well known that when people hear it, they immediately know what brand it represents. In this case, the sound may be considered a trademark and eligible for registration (in musical notation).

Reasons why logos cannot be registered as trademarks

According to the Benelux Convention on Intellectual Property, signs that lack distinctiveness cannot be registered as trademarks. The law also stipulates that the BOIP is obliged to reject trademark registration applications in certain circumstances, the most important of which include:

1. The mark is descriptive. If the mark directly indicates the characteristics or qualities of the product or service, it is descriptive. This is the most common reason for the rejection of trademark registration applications.

2. The mark lacks distinctiveness. Descriptive marks naturally lack distinctiveness. In addition, slogans, single colors or product shapes, for example, may also lack distinctiveness.

3. The sign is deceptive. For example, a sign that clearly shows coffee cannot be registered as a trademark for other products (such as tea or sleeping pills) because it is misleading to consumers.

4. The sign is a flag, emblem or other official sign of a country or international organization registered under Article 6ter of the Paris Convention for the Protection of Industrial Property. Such signs can only be registered with the BOIP after the relevant country or organization has granted permission. In practice, this ground for refusal is often related to signs containing the EU flag (or part of it).

5. The shape mark overlaps with other intellectual property rights such as designs or patents. For example, consumers are more likely to regard the shape of a chair or lamp as a design rather than a shape mark, so such a mark lacks distinctiveness.

6. The mark is contrary to public order and morality. This situation is very rare, but if it meets the requirements, the court may also declare the registered trademark invalid.

Ordinary trademarks and collective trademarks

A common trademark is a trademark that distinguishes the products or services of one operator from other products or services.

A collective mark is a mark that has common features that distinguish products or services, such as the wool mark WOOLMARK. The owner of a collective mark may not use the mark, but instead monitors that other users meet certain standards. These standards must be stated in the regulations for use and control of the trademark when the trademark application is filed.

Well-known trademark

According to Article 6bis of the Paris Convention for the Protection of Industrial Property, if there is a well-known trademark that has not yet been registered, no third party may register that trademark or a trademark that is likely to cause confusion with it. In addition, the owner of the above-mentioned well-known trademark also has the right to take action against trademark infringement. However, the trademark must be well-known to a large part of the public living in the Benelux region.

Trademark Protection

The owner of a registered trademark has the right to prohibit any third party from carrying out the following activities without his consent:

● Using a sign identical to a registered trademark in commercial activities for products or services identical to those indicated by the registered trademark;

● Using a sign in commercial activities that is likely to be confused with a registered trademark by the relevant public (where the sign is identical or similar to the registered trademark and the product or service indicated by the sign is identical or similar to the product or service indicated by the registered trademark);

● using a sign identical or similar to a registered trademark for products or services different from those indicated by the registered trademark in commercial activities (where the registered trademark should be well-known in the Benelux region and the improper use of the sign will result in unreasonable use of the registered trademark or damage to the distinctive features or reputation of the registered trademark);

● the use of a sign is not for the purpose of distinguishing products or services (where the improper use of the sign would result in unreasonable use of the registered trade mark or damage to the distinctive character or reputation of the registered trade mark); and

● Register a mark that is identical or similar to an earlier trademark.

Registration Method

First, apply directly to the BOIP to register a Benelux trademark.

Second, apply to the European Union Intellectual Property Office (EUIPO) to register the EU trademark. The Benelux region belongs to the EU, so the EU trademark can be used in the region and constitute a prior right to oppose the registration of the Benelux trademark.

Third, apply for Madrid international trademark registration and designate the Benelux Union or the European Union as the effective region.

References

• 1. Unregistrable elements of Benelux trademarks: Mingtu Intellectual Property [cited on 2019-02-28]