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Recent developments in the Benelux

The Netherlands shares with Belgium and Luxembourg one trademark and designs system, in addition to the Community Trade Mark and the international registration system. There is no national trademark office in the three countries and there are no national trademark or design registrations, but one Benelux Office for Intellectual Property (BOIP) responsible for the Benelux registration of trademarks and designs. The Benelux, having the need to deal with more countries in one registration, has in many ways been an important example for Community Trade Mark system as administered by the Office for Harmonisation in the Internal Market (OHIM).

In the recent past, changes were implemented or announced. The foremost important change will be that the representatives of the Benelux countries, Luxembourg, Belgium and The Netherlands, agreed, by signing a so-called protocol, to centralize the appeals of opposition or refusal decisions given by the Benelux Office.

Currently if a trademark applicant or other party does not agree with such a decision and would like to appeal it, it has to institute legal proceedings before the Court of Appeals in The Hague, Brussels or Luxembourg, which in fact are national courts, albeit also the Community Trade Mark Courts.

The fact that it is possible to institute legal proceedings before three different Courts and thus before courts in three different countries, has resulted in huge differences in the outcome of those proceedings and also to forum shopping. As a result, there is currently a lack of uniform case-law in the Benelux and that has had negative impact on legal certainty for trademark applicants. Companies are now facing different procedures and interpretations depending on which country they start legal proceedings. Furthermore, the time period in which a matter is handled also differs.

If the protocol is ratified by the parliaments of the Benelux countries, any appeal from the Benelux Office, will have to be handled by the Benelux Court of Justice in Brussels. The Benelux Court of Justice already existed for many years as it was the highest court for interpretation of among other things Benelux trade mark and design law. However, as a result of the EU trademark harmonization, the role of the Benelux Court had diminished, as the Court of Justice of the European Union has become the highest court for most interpretation issues in relation to Benelux trade mark and design law.

It is expected that the Benelux Court will deal with around 25 cases per year. The change is welcome by trademark owners as it creates one Benelux area of trademark and design law, by uniform application of rules and law.

Other recent Benelux developments

Since the end of November 2013, the Benelux participates in TMclass as a harmonized office. TMclass is a cooperation project in which OHIM has taken the lead to work with the national trademark offices, including the Benelux Office, to harmonize the terms used for the classification of goods and services. Using TMclass is generally recommended as it guarantees the acceptability of the goods and services in the trade mark application.

French and Dutch have always been the official languages of the Benelux Office. Since the beginning of October 2013, any business with the BOIP can also be conducted in English to facilitate international businesses. Although English has not become an official language, English has been adopted as a third working language, in addition to Dutch and French.

Allowing English as a working language has to seen against the background of the extra activities of the Benelux Office. Since 2010, The Benelux Office has been charged with the execution of the Trademarks Act for the Dutch Caribbean islands of Bonaire, Sint Eustatius and Saba on behalf of the Department of the Caribbean Netherlands. Although these islands are technically a part of the Netherlands as it is located in Europe, still a separate trade mark registration is required for having trade mark protection on these islands. As of 2015 the Benelux Office will also take care of the back-office activities of the Bureau for Intellectual Property of Sint Maarten, an independent country within the commonwealth of the Dutch Kingdom.

Furthermore, it is now possible to renew a trademark registration completely electronically.

Last but not least, the period within which an opposition has to be filed has become shorter in most cases. It used to be two months after the first day of the month following publication. It is now calculated as two months from the date of publication of the application.