1) Contrary to previous practice, the Trademark Office will
now examine trademark applications for inherent
registrability and may reject applications on such
grounds. The decision of the Trademark Office may be
appealed to the national Courts.
2) Belated renewal is now possible within six months from the expiration date upon payment of an additional fee.
3) The initial period of non-use that renders a registration vulnerable to cancellation has been extended from 3 years to 5 years following registration. In addition, in contrast to the previous law, resumption of use after the 5-year period will constitute valid use of the mark, provided that such use was not resumed within 3 months of learning of a possible non-use attack. Also, use of a trademark on goods only for export now constitutes valid use.
4) Collective marks may be registered.
5) Owners of the following earlier rights may institute proceedings to cancel registrations for conflicting marks:
6) The owner of a registered mark may prevent the unauthorized use or registration of an identical or similar mark in respect of identical or similar goods, provided that there is a likelihood of association between the marks, and also in respect of dissimilar goods, where the prior mark enjoys a reputation in the Benelux and the user of the conflicting mark would derive unjust benefit from, or such use would be detrimental to, the distinctiveness of the registered mark. However, owners of prior registered marks will not be able to cancel conflicting trademark registrations or prohibit use of a subsequent mark, if they knowingly acquiesced to the use of the subsequent mark for a period of 5 years, unless the subsequent mark was filed in bad faith.
7) Security interests are now recognized and may be recorded against trademark registrations.
8) In cases of infringement, trademark registrants may recover any profits gained by use of the infringing mark; may claim for their own use any property used in connection with the infringement, requesting that such property be destroyed or removed; and may request that the Court order the infringer to disclose the identity of the source of the infringing products.
9) Although previously it was not possible for Benelux trademark owners to exercise their rights to control the distribution of their genuine products that had been placed on the market anywhere in the world, the new Act restricts this exhaustion principle to goods initially placed on the market in the European Union. Therefore, it may now be possible for trademark owners to prevent trade in their genuine goods imported from outside the European Union into any EU country without their consent. Also, the owner of a registered trademark may now claim damages suffered from the parallel importation of goods that have been marketed by the registrant outside the European Union.
2) Belated renewal is now possible within six months from the expiration date upon payment of an additional fee.
3) The initial period of non-use that renders a registration vulnerable to cancellation has been extended from 3 years to 5 years following registration. In addition, in contrast to the previous law, resumption of use after the 5-year period will constitute valid use of the mark, provided that such use was not resumed within 3 months of learning of a possible non-use attack. Also, use of a trademark on goods only for export now constitutes valid use.
4) Collective marks may be registered.
5) Owners of the following earlier rights may institute proceedings to cancel registrations for conflicting marks:
a) prior registered marks that expired within 2 years
of the filing of the conflicting registration,
unless the prior registrant provided a consent or
the prior registered mark had not been used for a
period of 5 years;
b) marks that have previously been deemed well-known in accordance with Article 6bis of the Paris Convention;
c) marks previously used in good faith in the Benelux within 3 years of the filing of the conflicting registration where the subsequent registrant knew or should have known of such use and the prior user did not consent;
d) marks previously used in good faith outside of the Benelux within 3 years of the filing of the conflicting registration where the subsequent registrant, through direct relations with the prior user, knew of such use.
b) marks that have previously been deemed well-known in accordance with Article 6bis of the Paris Convention;
c) marks previously used in good faith in the Benelux within 3 years of the filing of the conflicting registration where the subsequent registrant knew or should have known of such use and the prior user did not consent;
d) marks previously used in good faith outside of the Benelux within 3 years of the filing of the conflicting registration where the subsequent registrant, through direct relations with the prior user, knew of such use.
6) The owner of a registered mark may prevent the unauthorized use or registration of an identical or similar mark in respect of identical or similar goods, provided that there is a likelihood of association between the marks, and also in respect of dissimilar goods, where the prior mark enjoys a reputation in the Benelux and the user of the conflicting mark would derive unjust benefit from, or such use would be detrimental to, the distinctiveness of the registered mark. However, owners of prior registered marks will not be able to cancel conflicting trademark registrations or prohibit use of a subsequent mark, if they knowingly acquiesced to the use of the subsequent mark for a period of 5 years, unless the subsequent mark was filed in bad faith.
7) Security interests are now recognized and may be recorded against trademark registrations.
8) In cases of infringement, trademark registrants may recover any profits gained by use of the infringing mark; may claim for their own use any property used in connection with the infringement, requesting that such property be destroyed or removed; and may request that the Court order the infringer to disclose the identity of the source of the infringing products.
9) Although previously it was not possible for Benelux trademark owners to exercise their rights to control the distribution of their genuine products that had been placed on the market anywhere in the world, the new Act restricts this exhaustion principle to goods initially placed on the market in the European Union. Therefore, it may now be possible for trademark owners to prevent trade in their genuine goods imported from outside the European Union into any EU country without their consent. Also, the owner of a registered trademark may now claim damages suffered from the parallel importation of goods that have been marketed by the registrant outside the European Union.
