15 March 2019

In 2015 the EU issued a new Trade Marks Directive (Directive no 2015/2436) in order to further harmonise and modernise the national trade mark rules. With regard to Benelux trade marks, the three Benelux Member States approved a Protocol on 11 December  2017 implementing a series of provisions of the Trade Marks Directive in the Benelux Convention on Intellectual Property ("BCIP") . The Protocol entered into force on 1 March 2019. Here we highlight the most important changes.

Graphical representation no longer required

Before, a graphical representation was required in order to have a sign registered as a trade mark. This requirement notably constituted an obstacle for the registration of non-conventional trade marks (such as sound marks or scent marks), as it is not easy to graphically represent a non-conventional mark.

The Protocol abolishes the requirement of a graphical representation. As a result, signs can be registered in the Benelux countries in any appropriate form as of 1 March 2019. The abolition simplifies applying for trade mark protection of non-conventional marks. An example would be applying for trade mark registration of a jingle by means of the submission of a digital sound file.

Clear and precise subject matter

The Protocol adds the condition of "clear and precise subject matter" to the BCIP. The condition of clear and precise subject matter is derived from the case law of the Court of Justice of the European Union. Despite the abolition of the requirement of a graphical representation, this condition will continue to make it difficult to protect non-conventional signs as trade marks. The subject matter of scents, for example, cannot be easily described in a clear and precise manner.

Extension of the absolute grounds for refusal or invalidity of shape marks

In order to prevent a person from obtaining a long-term monopoly on technical, generic or valuable shapes through trade mark law, the BCIP provides for an absolute ground for refusal or invalidity of shape marks where (i) the shape exclusively results from the nature of the goods themselves, (ii) the shape is exclusively necessary to obtain a technical result, or (iii) the shape gives substantial value to the goods.

The Protocol extends the aforementioned absolute grounds for refusal or invalidity to "another characteristic" (as compared to the shape) of the sign.

Certification marks and collective marks

As from 1 March 2019 it is possible to obtain protection in the Benelux countries for certification marks, in addition to individual and collective marks. Such certification marks did not exist in Benelux prior to 1 March 2019. Certification marks, also called quality marks, are trade marks which indicate that the owner guarantees that the products or services bearing the mark possess certain characteristics.

The definition  of a collective mark has also changed as of 1 March 2019. The "old" collective mark distinguished one or more characteristics shared by products and/or services. The "new" collective mark is meant to indicate that the products or services bearing the collective mark are provided by members of an association. The association is the owner of the collective mark.

With the introduction of the system of certification marks, most "old" collective marks will probably qualify as certification marks. The trade mark owner is obliged to convert the collective mark to a certification mark by the trade mark's renewal date at the latest.

Rights of the trade mark owner strengthened/expanded

The trade mark owner can prohibit the use of a (confusingly similar) sign by a third party. The BCIP specifies a number of acts against which the trade mark owner can particularly take action. For example, the trade mark owner can prohibit a third party from affixing a sign to the goods or their packaging, offering the goods or services under a sign, importing or exporting the goods under a sign, and using a sign on business papers and in advertising.

To strengthen and harmonise the rights of the trade mark owner, the Protocol extends the aforementioned enumeration. The possibility of prohibiting "the use of the sign on business papers and in advertising" is now subdivided into three separate grounds. In addition to taking action against the use of signs on business papers and in advertising, the trade mark owner can also prohibit the use of a sign as a trade name or company name or as part of a trade name or company name. The possibility of taking action against the use of the sign in advertising has been enhanced to include the possibility to take action against the use of a sign in a prohibited form of comparative advertising.

Counterfeit goods in transit

Before 1 March 2019, a trade mark owner could not easily take action against counterfeit goods in transit. The trade mark owner needed to prove that the counterfeiter intended to trade the counterfeit goods within the Benelux territory. The Protocol reverses the burden of proof: as of 1 March 2019, a Benelux trade mark owner can take action against goods in transit, unless the declarant or the holder of the goods can prove that the owner of the trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.