Editor’s Note: This is summary of Benelux law regarding contested trademark proceedings.
Filing an opposition against a trademark application in Benelux is a fairly inexpensive and effective tool of brand protection.
In Benelux, a trademark opposition may be filed by a trademark owner or authorized licensee. To do so, the Opposer must be the owner of an older trademark against a recently filed identical or similar trademark. Other grounds may apply. Below is a summary of the relevant rules and procedures as set forth by the Benelux Office of Intellectual Property (BOIP):
What are the grounds for an opposition? Under Benelux law, you can file a trademark opposition when an application has been filed for:
- an identical trademark for the same goods or services;
- an identical or similar trademark for the same or similar goods or services, with an allegation that the mark may cause confusion among the relevant purchasing public ;
- an identical or similar trademark for other products or services that result in unfair advantage or infringe the distinctiveness or reputation of the opposer’s existing mark;
- a recently filed trademark that describes a protected geographic indicator or location to which the applicant does not have rights;
- a trademark that was filed by an agent in his or her own name without the express authorization of the trademark owner.
When filing, the Opposer must also indicate its earlier trademark on which it relies as the basis for the opposition.
What is the time period for filing an opposition? An opposer must file the opposition within two months of the date of publication of the application, together with the applicable government filing fees.
What recourse does a party have if it misses the opposition filing deadline? Once the two-month period expires, a party may still contest the subject trademark through a trademark cancellation action (once the challenged trademark application matures to registration), or through the courts.
What are the consequences of a decision on the merits?
If the opponent is successful:
- the registration will not issue in its entirety, or for those goods and services that were opposed;
- if the defendant’s trademark application is not registered and stricken in its entirety, the defendant must pay 1045 euro to the Opposer;
- if the defendant’s trademark is registered for some of the goods or services, then neither party is required to -pay additional costs;
- if the trademark was based on an accelerated registration, it is removed in whole or in part from the Register, depending on the decision. This is known as a full or partial cancellation.
If the defendant is successful:
- in the case of a complete rejection of the opposition, then application will register and the Opposer must pay 1,045 euro to the defendant;
- if some of the goods or services are allowed registration but not all, then registration will issue for those goods or services that survived the opposition. In this case, neither party is required to pay additional costs;
The losing party is responsible for paying the 1,045 euros directly to the prevailing party in cases where one party wholly prevails on its claims or defenses.
What are the benefits of a Benelux trademark opposition? Oppositions are administrative actions that are less expensive than going through the courts. Accordingly, this is often a preferred procedural mechanism for brand protection.
Editor’s note: If you require further information about brand protection or trademark opposition procedures in Benelux, please contact us.