Time limit
The time limit for filing submissions against a provisional refusal is a maximum of six months. In the first instance, a time limit of three months is set. This time limit is extended once ex officio by one month and can be further extended on request up to the maximum time limit of six months. When the period allowed for lodging objections has elapsed, BOIP makes a final decision based on all the facts and circumstances of which it was apprised on time.
By whom?
Objection to a provisional refusal may be lodged by the applicant himself or by a representative (agent). The latter is assumed to have been authorised by the applicant and, in principle, does not therefore need to present a power of attorney. An appeal against a definitive refusal (a final decision by BOIP) may be lodged within two months - from notification of the definitive refusal - in order to have it annuled or reviewed (Article 1.15bis BCIP). The competent court designated by the BCIP is the Benelux Court of Justice. For more information about the lodging of an appeal, the applicable procedural rules, the court registry fee, contact details, etc.,see: http://www.courbeneluxhof.be.
Submissions
If an objection to a provisional refusal is lodged, it is important to file all submissions in good time, within the period allowed for lodging objections. It is no longer possible to do so once this period has elapsed. Submissions may be filed using My BOIP message box. If you do not yet have a My BOIP account, simply use the contact form on our website to request one. You will receive immediate confirmation of receipt.
Goods and services
BOIP examines an application with respect to the goods or services for which the application has been made and may limit a refusal to certain goods or services. In that case, a partial refusal is issued.
However, BOIP does not have to argue, on a product by product or service by service basis, why an application has been refused. If BOIP is of the opinion that a ground for refusal applies to an entire category or class of goods or services, it may suffice to give general reasons for the category or class concerned.
In this connection, applicants should be aware that an application will be refused, inter alia, if the sign may serve to designate characteristics of the goods or services applied for. In principle, the actual use of the sign has no bearing on this. Refusal can sometimes be avoided by looking critically at the list of goods or services in respect of which the application is being made. What is more, adopting a critical approach can also reduce the likelihood of oppositions.
Own merits
Applications are examined on the basis of the applicable law and each application is examined on its own merits. The refusal or acceptance by BOIP, a foreign registering body or the EUIPO of similar or even identical applications is irrelevant to this assessment. General legal principles, which are familiar from administrative law, do not mean that BOIP must accept a sign if an identical or a similar sign has already been accepted, no matter which body accepted it.
Acquired distinctive character
If a sign does not, in itself, have distinctive character, it may acquire it through use (so called acquired distinctive character). In order to prove acquired distinctive character, it must be demonstrated that the sign, as a consequence of its use, is now perceived by the relevant section of the public as being a trademark that distinguishes the goods or services of the applicant. It is up to the applicant or his representative to demonstrate this, by submitting documents concerning, among other things, the trademark's market share, how intensive, geographically widespread and long-standing use of the trademark has been, the amount invested by the undertaking in promoting the trademark, the proportion of the relevant class of persons who, because of the trademark, identify goods or services as originating from a particular undertaking, and statements from chambers of commerce and industry or other trade and professional associations. An opinion poll may also be submitted.
Acquired distinctive character can only overcome the grounds for refusal referred to in article 2.11, paragraph 1, sub b, c and d, BCIP. It cannot, however, overcome the specific grounds for exclusion for shapemarks in the spirit of article 2.1, paragraph 2, BCIP.