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As from today Benelux trademark legislation in line with EU law

01 March 2019
Intellectual property law

Today, 1st of March, changes were made to Benelux trademark law. Under the so-called Trademark Package, the Benelux trademark law had to be changed on a number of points. That actually had to happen by January 15, 2019. The Benelux legislator chose to implement the changes in two phases: the first changes were implemented on 1 June 2018 (Willem Leppink wrote about this earlier, see here), and today (a month and a half too late) the second set amendments. I will discuss the most important changes below point by point.

  • It is no longer required that a sign must be displayed graphically when registering. Starting today, all signs that are able to distinguish products from other companies can also be registered in the Benelux. An example of a ‘non-graphic’ sign is a sound fragment in an MP3 file.
  • Where until today only the ‘shape of the product‘ fell under the scope of absolute exclusion grounds, the scope has now been extended to other characteristics of the commodity.
  • A distinction has been made between certification trademarks on one hand and collective trademarks on the other. Until today, Benelux trademark law only knew collective trademarks. Remarkably, the collective trademarks as we know them will probably fall under the definition of certification trademarks from this day on. For those collective trademarks that are actually certification trademarks, a transitional arrangement will apply.
  • The position of the trademark holder is clarified and strengthened. If a trademark is used by a third party as (part of) a trade name, this will constitute an infringement of the trademark.
  • In addition, the trademark owner can also take action against counterfeit goods that are in transit in the Benelux.
  • Finally, some property law aspects have been clarified. Regarding property law, from this day on a trademark (or design) falls under the jurisdiction of the Benelux country where the trademark proprietor is vested on the date of the application.

Because of these changes Benelux trademark is now in line with EU legislation. A point at which Benelux trademark law continues to deviate from the surrounding countries and vis-à-vis the EU trade mark is the so-called ‘sub d infringement ground’. With a Benelux trademark one can also act against the use of a trademark that does not serve to distinguish goods and services. This keeps the Benelux trademark unique and preserves the advantages of a Benelux trademark.  The Ploum IP team can help you with these subtle differences and will be happy to help you.

More information

Arnoud Martens

T +31 6 3015 1903
E a.martens@ploum.nl

Willem Leppink

M +31 6 2021 0504
E w.leppink@ploum.nl

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