Too often owners of trade marks have not been able to properly prove use of their trade mark in the Benelux. They lose opposition procedures, and cancellation actions based on non-use against their trade marks are successful. This occurs because they rely on the fact that they have a registered trade mark, without realising that use is required to keep such rights alive.
The Benelux Convention on intellectual property stipulates that each Benelux trade mark must be used within five years of its registration. In case of non-use for five consecutive years, total or partial, every interested party can ask for the total or partial cancellation of the Benelux trade mark before a competent court.
If the trade mark has not been used within the described time period, the mark could be put into use at any moment, which may be sufficient to keep the mark valid, provided that a third party has not started a cancellation procedure for non-use. Under certain limited conditions it is possible to submit excuses for non-use: circumstances beyond the control of the owner, cases of force majeure for example.
A trade mark that has not been used within the five-year period might not properly serve as basis to prevent the registration or use of a later Benelux or Community trade mark of a third party that might be identical or similar. Actually, in oppositions, the owner has to be able to prove that the Benelux trade mark was genuinely used in the Benelux should the other party request it. Use has to be proven for the goods and services on which the opposition is based during the five years prior to the publication date of the trade mark that is the subject of the opposition.
The proof of use has to meet certain criteria. Packaging, labels, catalogues, price lists, invoices, photographs and advertising material can only serve as proof if they contain indications as to the place, time, duration, extent and manner of use. Undated documents will not be taken into consideration and the trade mark has to appear in every document. Even though documents may be submitted in their original language, the Benelux Office for Intellectual Property (BOIP) will only take them into account if they are considered sufficiently comprehensible, clear and self-contained. Otherwise, a translation is requested.
Gevers encourages trade mark owners to periodically review their portfolio in order to make sure that the trade marks are properly used and the rights still valid.
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Lidy-Anne Jeswiet-Van Westenbrugge |
GEVERS
Holidaystraat, 5
B-1831 Diegem - Brussels
Belgium
Tel: +32 2 715 37 11
Fax: +32 2 715 37 00
