June 2018
Benelux – New actions to tackle infringement
Since this month, the possibilities to take action against infringing trademarks are extended.

Now, the revised Benelux Convention on Intellectual Property has entered into force. The revisions were primarily made as an effect of the Trademark Package and subsequent revised European Directive.

The main points that will change as of June 1, 2018 are threefold:

  1. Cancellation actions based on non-use and nullity actions on absolute and relative grounds can, as of this month, also be initiated at the Benelux Office for Intellectual Property. Until now, the courts had exclusive jurisdiction over these actions. These new procedures will be similar to those existing at the EU IPO and it is foreseen that the new Benelux procedures will become popular, given the relatively low fees and expected swift procedures. For trademark owners these new actions form a useful additional tool. Not only when the opposition deadline has passed, but also as a reaction to a C&D, based on a mark that is subject to the use requirement.
  2. Secondly, the opposition grounds in Benelux will be extended and will, as of June 1, next, also include the “well known” mark basis. Until this month, an opposition could be based on either “sub a” (identical marks, identical goods) or “sub b”(identical/similar marks, identical/similar goods, risk of confusion). Now, the owner of a well known mark can also substantiate its opposition on the basis of “sub c” and thus also against dissimilar goods, provided that the younger mark takes unfair advantage of, or is detrimental to, the distinctive character of the trademark invoked.
  3. A last major change is that Appeals from opposition proceedings and refusals on absolute grounds will be concentrated with the Benelux Court of Justice instead of the High courts of The Hague, Brussels or Luxembourg. Nowadays, the designated Appeal Court is primarily based on the place of residence or incorporation of the trademark owner. Concentration of the Appeals will bring along more harmonization in Appeal decisions.

Turnstone welcomes these new actions as these bring additional (enforcement) tools for trademark owners.

Of course, we will keep you posted of the first cases that are dealt with under this new regime.