Further TM harmonisation in the Benelux

01 September 2010

Proposals are afoot to change Benelux trade mark law. First of all, appeals against the Benelux Office's decisions – refusals and oppositions – would be dealt with by the Benelux Court of Justice, which up until now has limited its decisions on interpreting Benelux trade mark law following questions put forward by the national courts. The courts of appeal of Brussels (Belgium), Luxembourg or the Hague (the Netherlands) would therefore lose their competence.

The reasoning behind this proposed change is to avoid the current divergences between the Brussels and the Hague courts of appeal; while the court of appeal of the Hague usually endorses all the decisions rendered by the Benelux Office, the majority of the Brussels court's decision are in favour of the applicant. Today, it is therefore preferable for a trade mark owner to appeal in Brussels.

A second major proposed change concerns cancellation action against a Benelux trade mark. Today, it is the competence of the national courts of Belgium, Luxembourg and the Netherlands. Tomorrow, this type of action could also be dealt with by a special department of the Benelux Office for intellectual property – possibly leading to an easier, less costly and speedier action.

A third change would provide for an anti-dilution provision in oppositions. The owner of an earlier trade mark with a reputation would, under certain conditions, be entitled to successfully oppose a new Benelux trade mark, even if the goods and services are different (this is similar to the possibility offered by Article 8(5) of the Community Trade Mark Regulation). Today, such action must be taken before a national court.

These proposals and others of minor importance tend to harmonise the Benelux law with the EU trade mark system, which in principle is to be applauded. However, it must be remembered that the Community trade mark legislation is under revision, with a first proposal of modification probably to be released in November.