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16 April 2018
On June 1 2018 two protocols that amend the Benelux Convention on Intellectual Property will take effect. These amendments will make it possible for Dutch parties to initiate actions before the Benelux Office for Intellectual Property (BOIP) for the opposition, revocation and cancellation of a Benelux trademark. They will therefore have a significant effect on Dutch revocation and cancellation procedures.
The options to oppose an application for a Benelux trademark before the BOIP will be increased. Following the amendments, it will be possible to oppose a Benelux application on the grounds of a reputed trademark (irrespective of whether the goods and services are similar) where the applied-for mark, without due cause, takes unfair advantage of or is detrimental to the prior mark's distinctive character or repute (this is equivalent to Article 8(5) of the EU Trademark Regulation (2017/1001)).
In addition, new BOIP administrative procedures will be introduced – namely, it will be possible to initiate a cancellation or revocation action concerning a Benelux trademark at the BOIP. Previously, such actions were the exclusive domain of the Dutch courts (if and when the Dutch court had jurisdiction).
These changes have been welcomed. Procedures before the BOIP will be more cost-effective and are also expected to be quicker than those before the Dutch courts. However, if action needs to be taken against the actual use of a prior mark, it will be necessary to address the Dutch courts.
Lastly, the Benelux Court of Justice's responsibilities will be expanded. The Benelux Court of Justice will become the appellate court for BOIP decisions concerning refusals (on absolute grounds) and oppositions. Previously, The Hague Court of Appeal had jurisdiction over such cases.
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