The title to a mark is obtained solely by first registration. Without registration there is the danger that, even after long and ancient use, further use may be prohibited at the request of a third party who has taken out a registration in good faith of a similar mark.
Trade Mark Search
Since the Benelux Office for Intellectual Property (BOIP) has no authorization to refuse applications on relative grounds prior to registering a mark, a search is advised in order to locate existing conflicting registrations.
Trade name searches
A trade name search is advisable in the case of new trade names, but also in the case of most new Trade Marks. Such searches are carried out on-line in the central database of the Dutch Chambers of Commerce.
It is possible to have searches made to determine, whether a certain word or device is common to the trade or frequently registered and whether a registration may prove to have lapsed on account of non-use, in which case a declaration of lapse can be asked for to the Courts. Searches are also conducted to determine whether, for example, hallmarks are co-registered with the Assay Office, health registrations are obtained for pharmaceutical marks or pesticides are registered with the Ministry of Agriculture. Failure to take out these additional registrations will make the mark vulnerable for an attack on the basis of non legitimate use, which does not maintain title to the mark.
Opposition is possible against Benelux registrations including the Benelux part of an International Registration. Opposition is only possible within a limited period of time after the publication of the younger mark. Prior to filing a notice of opposition it should be checked whether the registration at the basis of the opposition reflect the proper name and address of the opponent. If registration is over 5 years old evidence of normal use should be made available to substantiate the opposition and to avoid cancellation action due to non-use. Once the opposition period has passed, there is only Court action available which is far more expensive.
It is also possible to file a cancellation action with BOIP in stead of an expensive Court action. In this case there should also be taken into account that the registration at the basis of the cancellation action has been used the past 5 years and that this has to be proved.
A Benelux registration is valid for 10 years from the date of registration, which is the same as the date of application. The renewal can be requested 6 months before until 6 months after the current term of protection.
If the title to a mark lapsed because of non-use, it is possible to restore title to the mark by starting or reassuming use, provided no revocation action was taken. Registrations taken out in the interim (before restauration) cannot be attacked after restauration.
Licensing is only valid if agreed upon in writing and must be recorded in order to be effective against third parties. Recordal of licence is of special relevancy, if the licensee is the sole user of the mark.
The licence can be restricted to a part of the Benelux area.
Non-use of a mark by the registered proprietor or his recorded licensee for longer than 5 years lays the registration open to a declaration of lapse at the request of any interested party. The use must be 'normal', which implies that it should not be created only to maintain the title to the mark.
The Trade Mark owner should be able to prove use during the last 6 years at the utmost and is therefore well-advised to keep invoices, wrappings, labels, (dated) advertisements and the like so as to substantiate his claim.
Assignment must be in writing and must cover the entire Benelux territory. Assignment is only effective against third parties if it is recorded. Non-recordal for over 5 years lays the registration open to attack on grounds of non-use by the registered proprietor.
BOIP applies the International Classification of Nice of goods and services.
Service marks are provided for as of 1 January 1987.
Trade Mark watching
Watching of marks can be undertaken.