Belgium: Changes following the new EU Trade Mark Directive

The Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16 2015 to approximate the laws of the Member States relating to trade marks was published in the Official Journal on December 23 2015 and entered into force on the 20th day following its publication date. Most of its provisions shall thus be implemented in national laws within a three-year deadline, that is by January 14 2019.

To implement the Directive, the Benelux Convention on Intellectual Property (BCIP) has to be reformed.

The major change will be the administrative procedure for revocation and invalidity. Even if a Protocol in this regard is in the process of approval by the Benelux states, it will have to be further modified to include, in particular, the new absolute and relative grounds of refusal provided by the Directive. To set up such procedures, member states have an extended deadline to implement this provision, until January 14 2023.

Among the other mandatory provisions, the new definition of signs registrable as trade marks, adopted for the EUTM, will also have to apply to Benelux trademarks. The criteria of graphic representation shall thus disappear.

The requirements in terms of classification are also mandatory provisions. The reformed BCIP shall thus reflect the rules defined by the IP Translator case: the goods and services shall be identified "with sufficient clarity and precision" and class headings may be used provided that they comply with the standards of clarity and precision.

The BCIP will also have to redefine the current collective trade marks, in order to fit the definitions set out by the Directive for collective and certification trade marks. Note that the collective trademark as defined by the BCIP should be regarded as a certification trade mark. The BCIP could alternatively add a new section on real collective trade marks next to the existing regime. The Benelux countries will have to make a choice with regards to the fees, since the system of fees per class (already adopted for the EUTM) is an optional provision.

Estelle Delaroque

Gevers & OresHolidaystraat, 5B-1831 Diegem - BrusselsBelgiumTel: +32 2 715 37 11Fax: +32 2 715 37 00www.gevers.eu