Benelux trademark registration: This article gives you the basic information on the procedural aspects of Benelux trademark registrations and oppositions against Benelux trademark applications. For more general information about trademarks in the Benelux and the EU, check our blog post “10 frequently asked questions about trademark law”.
Benelux trademark availability check
First, before you start a trademark application procedure, you should always check whether identical or similar trademarks are already registered by other parties in the Benelux or at EU-level (European Union trademarks). You can do this yourself – the trademark registers are publicly available online – but I would advise you to ask a lawyer specialised in trademark law to assist you.
It is also wise to check the availability of domain names and social media accounts before you start the trademark application procedure.
Benelux trademark application with BOIP
Applications for Benelux trademarks are handled by the Benelux Office for Intellectual Property (BOIP).
Selection of Benelux trademark classes
An important part of the trademark application process is the selection of the relevant goods and services for your Benelux trademark. This is done on the basis of the “Nice Classification” system, which comprises 45 different “classes” of goods and services, subdivided in even more ‘subclasses”.
Try to make a sensible selection of classes and sub-classes. We often see cases where relevant categories have not been selected (and the trademark registration therefore does not reach its goal), or cases where irrelevant classes give rise to legal discussions that could have been avoided (oppositions, legal proceedings, etc.). It is therefore best to seek advice from an expert trademark lawyer.
It is often a good strategy not to select too many classes and subclasses, especially when a trademark availability search has identified similar trademarks owned by third parties. On the other hand, you should consider any possible future goods, services, or features that you might want covered by the trademark. Note that, once the trademark is registered, you cannot extend the scope of the trademark and thus need to apply for a new trademark to cover new uses.
Summarised: when selecting the trademark classes, you should try to find a compromise between a safe selection (to avoid unnecessary discussions with other trademark owners) and a future-proof selection (to avoid new trademark applications for the same brand in the future).
Publication of Benelux trademark application
After the application has been submitted, the BOIP will check if the application meets the basic formal requirements. The “filing date” (important to determine the priority of the trademark in relation to other applications) will be the date on which the minimum requirements are fulfilled and the full payment is received. After approximately 14 days, the trademark application will be published (this is not yet a registration of your trademark, only a publication of the application).
Opposition against Benelux trademark application
After the publication of your trademark application, third parties will have 2 months to file an opposition against your trademark application. Oppositions are most often based on a prior trademark that is valid in the Benelux (a Benelux trademark, a European Union trademark, or an international trademark with validity in Belgium, the Netherlands or Luxembourg). You can also base your opposition on a trademark application (i.e., you applied for a trademark, but the mark is not yet registered – the opposition will be suspended until your trademark is registered).
An opposition can be filed on the following basis:
- The new trademark application is identical to an earlier trademark and is applied for the same classes of goods or services;
- The new trademark application is identical or similar to an earlier trademark for the same or similar classes of goods or services, and this risks causing confusion among the relevant public;
- The new trademark application is identical or similar to an earlier trademark, irrespective of the classes of goods or services, where the earlier trademark is a ‘well-known’ mark (note that well-known trademarks are quite exceptional in the Benelux), and the use of the new trademark would take unfair advantage of or would infringe upon the distinctiveness or the reputation of the earlier trademark, without a valid reason;
- The new trademark application was filed by an agent or representative of the trademark owner in his own name without proper authorisation of his or her client;
- On the basis of an earlier (application for a) protected ‘designation of origin’, or a protected ‘geographical indication’;
The BOIP will encourage the parties to settle their dispute. The parties are granted a so-called “cooling-off” period in order to find a settlement. This period comprises two months and is intended to enable the parties to reach an amicable settlement, thus allowing them to reach a solution without the intervention of the BOIP. The “cooling-off” period can be extended in mutual consent. If the parties do reach a settlement, the BOIP must be notified. If no settlement can be found, the parties will have to exchange their written arguments in a legal procedure before the BOIP. The BOIP will subsequently take its decision (i.e., a refusal to register the trademark application or a rejection of the opposition). Within two months of the communication of this decision, the parties can file an appeal with the Benelux Court of Justice.
Registration of the Benelux trademark
Before registering your trademark, the BOIP will carry out a substantive examination of the trademark application (the so-called “assessment on absolute grounds”). If the BOIP decides that your trademark is not fit for registration (for instance, because it lacks distinctiveness, because it is deceptive, or because it is contrary to morality or public policy), you will have 6 months to object to the refusal. If the BOIP confirms its refusal, you will have 2 months to lodge an appeal with the Benelux Court of Justice to obtain an order for registration of the trademark.
If your trademark application fulfils all the legal requirements, it will be registered in the BOIP trademark register and you will receive a certificate of registration. The trademark application procedure may take up to 4 months (and considerably longer if an opposition against your application is filed or if the BOIP refuses your application on absolute grounds). As of the day of registration, you will officially enjoy all the rights of exclusivity that come with your trademark. The filing date (not the registration date) will be used to determine who has the oldest right if a conflict with a third party occurs.
If you opt for a priority registration (also called accelerated registration), your trademark will be registered as soon as the formal requirements have been checked. This procedure usually takes only a couple of days’ time. However, you should keep in mind that the assessment on absolute grounds (and a possible opposition against your trademark) will take place after registration. In other words, your trademark registration may still be cancelled after its registration.
Fees for a Benelux trademark application
Online registration of a trademark in the Benelux for one class costs 244 euro. If you choose more classes, a supplement applies for each extra class. For a second class, you will have to pay an additional 27 euros. As from the third class onwards, you will have to pay an extra 81 euros per class.
For a priority registration (accelerated trademark registration procedure), you will pay a supplementary fee of 196 euro (for 1 class; for a second class, you will a supplementary fee of 21 euros; as from the third class, you will pay 63 euros per class).
These costs will not be reimbursed in case of non-registration following an opposition or a refusal procedure.
The renewal fee (after 10 years) is currently 263 EUR (for 1 class). For the second class of goods and services, you will pay 29 euros. As from the third class onwards, the renewal fee is 87 euros per class. There is no annual fee to maintain your registration.
If you use professional advisors (such as a specialised trademark lawyer), you will have to add their fees to these basic costs. Using professional advisors is often a good idea to increase the chances of success of your application and to bolster the effective power of your trademark.
Do you want to register a trademark or do you have other questions regarding trademarks (e.g. trademark infringements, trademark licenses, fees for a trademark registration, etc.)? Do not hesitate to contact us!
Bart Van Besien