Five years ago, the new Directive (2015/2436) relating to trademarks was introduced into the BCIP within the so-called ‘Trade Mark Package’. Pieter Veeze [Principal legal officer] looks back at the expectations he had at the time.
When the new trademarks Directive was implemented in the BCIP, I wrote an article (IER 2019/37) in which I foresaw some of the expected consequences for practice. Five years on, I thought it would be interesting to see to what extent my expectations have been realised. The results are surprising.
New types of trademark
Among the changes is the removal of the requirement for a graphic representation of a trademark in the Trademarks Register. A trademark must now ‘being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor’ (Article 2(1)(b) BCIP). This has expanded the possibilities for registering non-traditional types of trademarks. For example, motion marks and multimedia marks, which can be represented by an MP4 file, are completely new. Sound marks already existed, but previously they could only be represented graphically, on a score. This excluded certain sounds, such as the roar of a lion. Today, these sounds can be perfectly reproduced using an MP3 file.
Assessment of new types of trademarks
In my article at the time, I indicated that two approaches were possible for examining the absolute grounds relating to these new types of trademarks. We could follow the (rather high) threshold developed by case law for colour and shape marks, or the (lower) threshold for slogans. The latter approach was adopted in Common Communication CP11.
More opportunities for new types of trademarks
The assessment criterion is therefore fairly low. Most new types of trademarks are considered to be sufficiently distinctive. A good example is the playful multimedia brand ‘Super Simon’, which has been registered by both BOIP and EUIPO (following a Board of Appeal decision).
Nevertheless, the number of applications for this type of trademark can be counted on the fingers of one hand each year and is therefore very limited. In my opinion, the opportunities are not sufficiently exploited. For example, adverts are often accompanied by a jingle, and in many trademark applications it is possible to hear a sound or something moving in the logo at the launch. These elements would often make excellent sound, multimedia or motion trademarks. So, as I said earlier, I think that trademark owners (and probably especially their advisers: lawyers or solicitors, and marketing or advertising agencies, for example) could be more creative when it comes to actually protecting new types of trademarks.
Collective and certification marks
Another change concerns the introduction of the distinction between collective marks and certification marks. Previously, the BCIP only recognised collective marks, but its definition was so broad that it included both current types.
In order to avoid any ambiguity regarding registrations of existing collective marks – which are therefore considered to be certification marks or ‘new’ collective marks under the new rules – a transitional provision has been made. Owners of existing collective marks must make a choice and indicate whether their mark is a certification mark or a collective tmark under the new rules, at the latest when renewing the registration. The BOIP naturally informed the mark holders concerned.
Since then, most owners have made their choice and converted their registration. Of the 1,200 or so ‘old’ collective marks in existence in 2019, 385 remain. There are now 570 certification marks and 287 ‘new style’ collective marks registered. The figures are therefore very low. By way of comparison, there are around 340,000 registered Benelux individual trademarks.
New grounds for cancellation procedure
The last change I would like to address briefly concerns the grounds for cancellation at BOIP. The trademark Directive also harmonises procedures, and the grounds for invalidity and revocation are mandatory provisions. Therefore, the cancellation procedure, which was introduced in June 2018, had to be amended after only nine months because the grounds had to be extended. In particular, the new grounds are bad faith and what we call ‘agent mark’, which I think can more or less be considered a sort of bad faith.
Bad faith is surprisingly often claimed
In its opinion on the introduction of the cancellation procedure, the Benelux Council for Intellectual Property was not enthusiastic about the idea of including these grounds in the BOIP proceedings. The Benelux Council thought it best to leave it to the courts. To be honest, I agreed and had serious doubts about the practical need for BOIP to conduct proceedings on the basis of these grounds. The experience we now have in this area has therefore rather surprised me. Of the 176 decisions taken so far by the BOIP in cancellation proceedings, bad faith has been claimed in 25 cases (read the cancellations decisions here). That's much more than I expected!
PS: The figures quoted are a snapshot of the situation at the time this article was written. Consequently, when the Trademarks Register is consulted at a different date, there may be discrepancies.
