On 11 December 2017, top representatives of the Benelux countries signed a protocol (the "Protocol") amending the Benelux Convention on Intellectual Property (Trade marks and Designs) (the "BCIP") as regards the implementation of Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks (the "Directive") (see VBB on Belgian Business Law, Volume 2015, No. 12, p. 16, available at www.vbb.com). The Directive covers both the substantive and procedural aspects of trade mark law and aims to modernise and simplify trade mark registration systems.

The Protocol contains almost exclusively provisions the implementation of which is mandatory under the Directive. The most significant elements of the Protocol are the following:

  • The absolute and relative grounds for refusal or invalidity are grouped together in two new provisions (Articles 2.2bis and 2.2ter BCIP);
  • The requirement of graphic representation is replaced by a more flexible requirement allowing the representation of trade marks of a less conventional type (like sound and colour marks);
  • Specific grounds for exclusion of three-dimensional trade marks were added;
  • The provisions on the coexistence of trade marks with protected designations of origin and geographical indications are broadened and specific provisions are introduced on traditional indications for wine, traditional specialties guaranteed and names of plant varieties;
  • The rights of trade mark owners are reinforced on various points: action may be taken against the use of a trade mark as (part of) a trade name or corporate name or in comparative advertisements in a manner contrary to Directive 2006/114/EC concerning misleading and comparative advertising, and the possibilities to take action against counterfeit goods in transit are strengthened;
  • To counterbalance the reinforcement of the rights conferred on trade mark owners, the limitations and means of defence are extended;
  • Possibilities for exclusive licensees to take action against infringement are strengthened;
  • Provisions are made on trade marks as property (incl. the applicable law since three legal systems coexist within the Benelux);
  • Introduction of a specific regime for certification marks (i.e., trade marks capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from goods and services which are not so certified);
  • The main procedural rules are aligned with the trade mark systems applied in the EU in order to make trade mark registration and its management easier.

The new updated BCIP will enter into force as soon as it will have been approved by the parliaments of the Benelux countries. The Directive must be transposed by 14 January 2019 at the latest.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.