The Benelux Convention on Intellectual Property (BCIP) will be amended next month. This will give BOIP new authorities and changes how appeals are lodged against BOIP’s decisions.
Cancellation procedure
As from 1 June, it is possible to request BOIP to cancel a trademark registration . BOIP will have the authority to rule in a claimed invalidity or revocation of a trademark. Of course, the current possibility to bring the matter before the courts will also remain.
The grounds that can be invoked here are the same as those already applied by BOIP. These are the existing grounds used when assessing applications on absolute grounds, when examining whether a trademark has been put to genuine use, and the current grounds for opposition.
A new element, also relevant in the case of oppositions, is the addition of the ‘sub c’ ground to BOIP’s competencies. After 1 June, a well-known trademark may therefore oppose or invoke the invalidity of a later similar trademark for non similar goods and services, if that takes unfair advantage of, or is detrimental to, the distinctive character of the trademark invoked.
Procedurally, the request for cancellation will be treated in a manner as similar as possible to the opposition procedure. Time limits are two months, the same language regime applies, and the defendant has the final say. If a claim is based solely on non-use, the course of events logically will differ slightly. In that case, it will firstly be up to the defendant to submit documents. The defendant will also have the final say.
Benelux Court of Justice
All appeals against decisions of BOIP, in the implementation of the Titles II, III and IV – i.e., where trademarks, designs and i-DEPOTS are concerned– are henceforth to be brought before the Benelux Court of Justice.
As from 1 June, the Benelux Court of Justice will have a new second chamber acting as a de facto body that is competent to judge BOIP’s decisions. The current competence to appeal against BOIP’s refusal and opposition decisions at the three national courts will be no longer in force. The aim is to obtain more unambiguous decisions.
As already mentioned, the new competence of the Benelux Court of Justice covers all BOIP’s decisions under Titles II, III and IV. It will therefore be possible to appeal against more than refusals, oppositions and cancellations. There is always an appeal period of two months.
More information?
The texts of the Benelux Convention on Intellectual Property (BCIP) and the Implementing Regulations under the Benelux Convention on Intellectual Property (trademarks and designs), as they will read after 1 June, are available on our website. The forms for submitting the new proceedings will be available after Whitsun. In addition, we will organise a seminar on 17 May on both subjects.