About pronovem Information IP Download Links Events News Faq

a. Introduction

The Uniform Benelux Trademark Law came into force on January 1st, 1971. It created a single trademark for the whole Benelux region governed by the rules common to three states. In other words, the Benelux trademark has come to substitute the national trademarks in that there exist no national Belgian, Holland or Luxembourg trademarks anymore.

The original text of the uniform Benelux Trademark Law did only allow for the protection of trademarks for products. Since January 1st, 1987 (and the coming into force of the Protocol of November 10, 1983), trademarks for services have been equally protected by the Benelux Trademark law.

b. Benelux legislation

The Benelux Convention has been strongly amended on January 1st, 1996 due to the Protocol of December 2, 1992 came entered into effect and modified the uniform Benelux Trademark law.

c. Definition of the Benelux trademark

The following signs susceptible of graphic representation may constitute a Benelux trademark, namely: words, denominations require_onced, graphs, imprints, stamps, letters, figures, product or packing forms and all other signs that may serve to distinguish products and/or services of a company.

d. Benelux trademark filing

All natural or legal persons, entities of common law require_onced, are allowed to file a Benelux trademark. The question remains debatable in case of a non-profit-making association,. In principle they are not allowed to file a trademark since they have no commercial activity. Nevertheless, certain non-profit-making associations organise occasionally commercial activities in order to collect money in favour of their non-profit activity. In the latter case, it is in general authorised to file a trademark for these incidentally organised activities.

Citizens who are not Benelux citizens should be represented by a Benelux mandatory.

Filing may be carried out in French or in Dutch with the national Office (Belgian, Holland or Luxembourg) or directly with the Benelux Trademark Office in The Hague. We remain at your disposal for a list of information and documents required for filing a Benelux trademark.

The exclusive right concerning a Benelux Trademark is acquired due to the first filing made on the Benelux territory. However, the Benelux filing may claim priority of a national filing in one of the member countries of the Paris Convention.

e. Examination proceedure

This proceedure consists of several successive steps that may lead to refusal of the application on formal grounds, as well as on absolute grounds. Refusal on relative grounds does not fall within the competence of the BTO (see infra under 5.d.).

a. Examination of formal requirements

After the Benelux Trademark filing, the information data (date and number) of filing will be transmitted by the BTO or the national Office to the office where filing was carried out. If filing was made with a national administration, this office will transmit the filing to the BTO. Then the BTO proceeds to an examination if the filing requirements have been met, namely: the payment of official fees, classification of products and services, receipt of the mandatory's power of attorney, etc. The BTO may invite the applicant to correct certain insufficiencies within a prescribed delay; lack of which will lead to the application being refused on formal grounds.

b. Examination of Absolute Grounds for Refusal

The BTO may refuse the application immediately based upon the following absolute grounds:

• the sign consists of a trademark which does not agree with the definition under point 3, underneath;
• the trademark is devoid of any distinctive character;
• the trademark is contrary to public policy or to accepted principles of morality;
• the trademark is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services.

In the case of a refusal, the possibility remains to argue the case - without any guarantee for success. In the case of a final refusal by the BTO, a final appeal before the Court is worth considering if you want to obtain nullification of the final decision of refusal concerning the registration by the BTO.

c. Search among prior trademarks

An official search of priorities will be carried out by the BTO among Benelux trademarks, Community trademarks and International trademarks designating the Benelux.

The BTO will transmit the results of this search to the applicant or its agent.

A prior trademark mentioned in the search report can be either an identical or a similar trademark, filed or registered for similar products and/or services. Even though the BTO is not competent to refuse a Benelux trademark on account of the existence of prior rights (this is a relative ground of refusal), it is important to know about the existence of prior trademarks that may form an obstacle to the usage of your own trademark.

Following the notification related to the search report, the person who filed obtains a delay of 6 months in order to confirm his filing. This confirmation (made by a simple letter to the BTO) is obligatory. Failure to do so will lead to the filing being withdrawn and the trademark remains unregistered.

d. Opposition (relative grounds)

Presently the Benelux Trademark law does not foresee the possibility of opposing against the filing of a trademark by holders of prior trademarks. Discussions on a legislative level are in progress but no precise date has yet been settled concerning an opposition system to came into effect.

Consequently, litigations still have to be settled in a judicial proceedure following registration.

f. Registration

Within a delay of 3 to 6 months following the confirmation of filing, the BTO will proceed with the registration of the trademark and will forward the certificate of registration to the holder or his mandatory.

g. Obligation of use

After registration, the owner of a Benelux Trademark may forfeit his rights if the trademark has not been the subject of proper use over a continuous five-years period, at least if there exists no justifiable ground for this shortage of use. It is, however, unnecessary to extend this use to the whole Benelux region; it will be the judge's appreciation based on specific circumstances of the case whether the territorial extension of use is to be considered "proper use".

h. Duration

The Benelux Trademark remains valid for 10 years and can be unrestrictedly renewed.

Annex : Information and documents requiered for filing

The information and documents required for filing a trademark are the following:

• name and address of the applicant, mentioning its legal form in case the applicant is a company,
• a power of attorney, signed by an authorised person, mentioning name and function of the signatory,
• in case of a figurative trademark, at least 8 copies of good printing quality (preferably laser, offset or bromide) having the following dimensions: maximum 8 x 8 cm and at least 1,5 x 1,5 cm,
• a broad and complete description of the products and/or services offered under the trademark. Consequently, Office Van Malderen will take care of the correct classification thereof. Before the final filing of the trademark, the proposal for classification will be transmitted to you for approval. It has to be noted that although Office Van Malderen takes all due care to propose a correct classification, it is possible objections are raised. These can be overcome by argumentation during the later stages of the proceedure.
• information concerning priority, including date, number, country and a certified copy of the priority filing or relevant certificates, if Office Van Malderen was not responsible for the prior filing.