The EU Directive No 2015/2436 (Directive), one of the pillars of the trademark law reform at the European level, must be transposed into national law by 14 January 2019 at the latest.
The Benelux Member States have not only chosen to adopt the provisions of the Directive as literally as possible, but also decided to make the structure of the Benelux Convention on Intellectual Property (CBPI) more consistent with that of the Directive and the EU Trade Mark Regulation. In addition, the wording has been adapted and standardized throughout the CBPI to ensure that it corresponds as closely as possible to the terminology of the Directive.
As you may recall, various changes were already introduced in the Benelux trademark law on 1stJune 2018. For a summary of the main changes, we refer you to our previous e-zine on this subject.
In early 2019, a series of new amendments to the Benelux Convention on Intellectual Property (BCIP) will also enter into force, resulting in some significant changes.
Here are some of the most important takeaways.
1. New system for the taxes
- Trademarks
As from 1st January 2019, the basic tax for Benelux trademark applications and renewals will no longer automatically be for three classes of goods or services. The Benelux legislator has indeed abandoned the “3 classes for the price of one” system for a “one fee per class” system as exists for EU trademarks.
This means that, as from 1st January 2019, a basic tax will apply for one class (244 EUR) and an additional tax will be added for each extra class of goods or services.
It will therefore be more expensive to register a Benelux trademark for multiple classes (e.g., it will cost 352 EUR for 3 classes instead of 248 EUR today) (see details as of 1st January 2019).
If you are considering applying for a new Benelux trademark or a renewal (especially if it relates to more than one class), we advise you to proceed with such an application or renewal before 1st January 2019.
The aim of the Benelux legislator is to encourage registration of trademarks only for the goods and services for which they are actually used and to prevent too broad descriptions. Indeed, the “3 classes for the price of one” system had the negative consequence that trademark owners registered their trademarks for classes that were not necessarily used.
- Designs
There will no longer be a supplement per added image for Benelux design applications. The tax structure for designs will indeed be simplified, as the outdated splitting of costs for design applications will end as from January 2019.
2. A 'graphic representation' is no longer required
Article 2.1 of the BCIP currently provides that a sign has to be represented graphically in order to be considered for registration as a trademark.
In early 2019, this requirement for a “graphic representation” of the sign will no longer be applicable.
The criteria will be that the sign should :
- be capable of distinguishing the goods or services of one company from those of another company (which is already the case); and
- be represented in the register in a manner that enables the competent authorities and the public to determine precisely and clearly the sign enjoying the protection.
As of 1st January 2019, it will be possible to register a non-visible sign or a sign that is difficult to capture in a 2D image – such as multimedia signs, the shape of a product or its packaging, a hologram or a sound – provided that the sign can be described in a sufficiently clear and accurate way (if distinctive).
3. Shape exclusion grounds are extended to characteristic exclusion grounds
The BCIP currently provides that the shape of a product cannot be registered as a three-dimensional trademark if it is exclusively imposed by the nature of the product.
In early 2019, the grounds for exclusion will apply not only to shapes but also to other characteristics that are imposed by the nature of the product such as colours, smells and sounds.
The protection will be refused if the shape/characteristic:
- is determined by the nature of the product;
- gives the essential value to the product;
- is necessary to obtain a technical result.
4. Distinction between certification trademarks (quality trademarks) and collective trademarks (association trademarks)
Collective trademarks already exist in the Benelux and cover association trademarks as well as quality trademarks.
In early 2019, certification trademarks will be explicitly included in the Benelux trademark system and be distinguished from collective trademarks.
The term collective trademark will then only protect association trademarks, and quality trademarks will be protected via the new certification trademarks.
5. Clearer rights for trademark owners
Their rights will be strengthened. They will notably be more clearly entitled to take action against counterfeit goods in transit or against the use of a trademark as a commercial name in an advertisement.
In early 2019, these changes will bring new opportunities that may be favorable to trademark owners. Trademark owners should revaluate their trademark strategy and take action where necessary.
