11-22-2016 (Newsletter Issue 21/16)
Electronic Renewal of Design Registrations Possible Now
The Benelux Office for Intellectual Property (BOIP) informed that it is now possible to renew design registration via their website.
After logging into ‘My BOIP’, owners need to click on 'Renew a design registration'. Upon completion of the application, owners may pay directly with iDEAL, Visa, MasterCard, Bancontact or their current account with BOIP.
Owners will receive a confirmation by email once the payment has been processed. This confirmation contains a reference to the online Designs Register, where they can always find the most up-to-date information on their design registration. Renewal certificates will no longer be received by post.
05-31-2016 (Newsletter Issue 10/16)
IP Bureau of Sint Maarten Opened
On April 8, 2016, the Bureau for Intellectual Property of Sint Maarten (BIP SXM) has opened.
The Benelux Office for Intellectual Property (BOIP) has entered into an agreement with Sint Maarten and is responsible for the administration of Sint Maarten trademark applications. The Bureau in Sint Maarten takes care of the assessment of the applications on absolute grounds and delivers the titles.
11-11-2015 (Newsletter Issue 17/15)E-Filing in Sint Maarten Available NowThe Bureau for Intellectual Property of Sint Maarten (BIP SXM) in cooperation with the Benelux Office for Intellectual Property (BOIP) has opened for business on-line on Monday, October 5, 2015.
The Bureau for Intellectual Property of Curaçao will no longer handle or process any requests received on or after October 1, 2015 concerning Sint Maarten.
Applications, requests for renewal and other requests concerning Sint Maarten trademarks received between October 1st and October 5th will be given the time of their actual receipt and will be processed accordingly.
A trademark representative has to be recognized by BIP SXM who will publish a list on their website of all Sint Maarten trademark representatives registered at the Bureau. The registration form for the representatives can be found here
Further, a list of the applicable fees, as per October 1st, 2015, of the Bureau for Intellectual Property Sint Maarten, can be found here
09-29-2015 (Newsletter Issue 15/15)IP Bureau of Sint Maarten Starts SoonThe Bureau for Intellectual Property of Sint Maarten (BIP SXM) starts soon. The National Ordinance BIP is planned to go into effect as per October 1, 2015. As from this day, entrepreneurs active on Sint Maarten can protect their national as well as their international trademarks via a electronic procedure. Trademark representatives on Sint Maarten can register before October 1, 2015, at BIP SXM via the form on the website.
In addition to the registration system, there is a fully online trademarks register available for Sint Maarten. This register will provide real-time information regarding the current trademark rights on Sint Maarten and facilitate the procedure for acquiring rights quickly and efficiently.
The BOIP will take care of the back-office activities. For its part, the BIP SXM will be responsible for the execution of the legal tasks from the Trademarks Ordinance and disseminating information to the public. With these activities, the BOIP has further expanded its network of international partnerships. Since 2010, it has already been charged with the execution of the Trademarks Act for Bonaire, Sint Eustatius and Saba (Wet Merken BES, or WMB) on behalf of the Department of the Caribbean Netherlands (Rijksdienst Caribisch Nederland). The Act applies to the three special Dutch “municipalities” of Bonaire, Sint Eustatius and Saba, which are jointly referred to as the Caribbean Netherlands.
09-15-2015 (Newsletter Issue 14/15)
Process for Design Applications Improved
The Benelux Office for Intellectual Property (BOIP) will use a new internal system starting September 3, 2015 for the processing of design applications. This new system will speed up the registration proceedings.
Important modifications are:
- Registration certificates for designs will no longer be sent. A copy of the registered design can be printed out through the online register. This copy will have the same legal status as a copy issued by BOIP.
- The Benelux Designs Register has been the official publication medium for drawings and designs since July 2015. From September drawings or designs will be published daily in the register.
07-14-2015 (Newsletter Issue 11/15)New Online Design RegisterAs of July 13, 2015, the Benelux Designs Register will be the official publication of drawings and designs. The Benelux Designs Gazette will therefore no longer be published.
All information previously available in the Benelux Designs Gazette is now available in the online register. This register contains the details and images of the drawings and designs registered in the Benelux valid on January 1, 2012 or registered on a later date.
The details of, among others, renewals and changes of the registrations can also be consulted via the register. The publication will initially be updated monthly. In the near future, the publication will happen on a daily basis, as is currently already the case for the Benelux Trademarks Register.
Designs older than January 1, 2012 are still available in the Benelux Industrial Designs Gazette, previously the official place of the publication.
07-14-2015 (Newsletter Issue 11/15)Bureau for Intellectual Property of Sint Marten Now OnlineThe Benelux Intellectual Property Office (BOIP) has announced that the website of the Bureau for Intellectual Property of Sint Maarten is now online. The new BIP SXM is being established to register trademarks in Sint Maarten in partnership with BOIP. It needs to be noted that it is not yet possible to file applications for Sint Maarten trademarks with BIP SXM/ BOIP. At this moment BIP CUR is still the competent authority for Sint Maarten trademarks.
Alongside the website, a new online register for Sint Maarten is now also available. Trademarks cannot yet be filed with the BIP SXM, but this will be possible once the necessary legislation is in place.
All international trademark registrations valid in Sint Maarten are included in the online register. They will be mentioned in the list of trademarks found after a search and can also be retrieved by their registration numbers.
For detailed information concerning these international trademarks, the online register provides a link to the WIPO ROMARIN database, their original source. This link is activated by clicking the trademark concerned.
Source: www.boip.int, www.bip.sx
07-14-2015 (Newsletter Issue 11/15)
New And Improved Online Trademark Filing
The Benelux Intellectual Property Office (BOIP) has announced that it is now possible to file trademark applications online using the BOIP's updated web environment.
Benefits of the new environment:
- Intuitive and user-friendly
- Quick and easy to find and select all the relevant goods and/or services
- Immediate PDF confirmation in your mailbox, with the application number and a financial overview
The following needs to be noted:
- In order to submit trademark applications online, users must log in using their My BOIP account. The account can be set up on the BOIP's website free of charge.
- Payment is due online when the applications get filed. It can be paid with iDEAL, Bancontact, credit card or current account.
The new environment does not affect applications submitted via BMB Connect.
05-27-2015 (Newsletter Issue 8/15)Filing of Oppositions Online PossibleThe Benelux Intellectual Property Office (BOIP) has announced that customers can file oppositions against trademark applications online as from April 21, 2015.
The online procedure for filing oppositions is largely the same as the paper procedure, but it offers a number of important benefits. For example, it allows customers to file oppositions at any time and from any location, provided they have access to an Internet connection. Furthermore, customers can easily import the disputed trademark and the right invoked from TMview. Online filings also involve no paper forms and customers receive an e-mail confirmation in the form of a PDF file immediately following filing. Paper filings of oppositions will remain possible.
For more information on the opposition procedure, please click here
12-09-2014 (Newsletter Issue 19/14)Changes to International Registration ProceduresThe Benelux Intellectual Property Office (BOIP) has announced on its website that several changes to international trademark registration procedures enters into force on 1 December 2014.
These changes have arisen as a result of the BOIP's decision to no longer process requests for modifications, territorial extensions and the renewal of international trademark registrations. Most of the procedures relating to the international register are automated. The BOIP's involvement is not necessary, and may even be inefficient and delay the process. Applications for the above should be submitted directly to WIPO's website effective 1 December 2014 by completing one of the online forms.
There are, however, cases in which intervention by BOIP is necessary. This is the case for cancellations ordered by a court and for modifications (transfers, licenses, rights of pledge and attachments) that are requested by a party other than the registered holder. Such requests, which are in any case exceptional, must be filed via BOIP.
The appropriate WIPO form needs to be completed and must be sent to BOIP (preferably using our contact form), together with the necessary supporting documents and an explicit statement that due to the nature of the request it cannot be submitted directly to WIPO.
Trademark holders will still be able to find all the relevant information about renewals, modifications and the extension of your international registration, including direct links to the relevant WIPO services, on the BOIP's website.
BOIP's Information Centre can be contacted in case of questions.
06-10-2014 (Newsletter Issue 9/14)
Agreement between Sint Maarten and BOIP
An agreement was concluded between Sint Maarten and the Benelux Office for Intellectual Property (BOIP) regarding the execution of Sint Maarten's trademark law.
Starting on 1 January 2015, entrepreneurs who are active on Sint Maarten can protect their trademarks by means of a modern electronic procedure. The BOIP will set up and manage this procedure for Sint Maarten. The BOIP will also see to it that Sint Maarten makes a fully online trademarks register available to the public. This register will provide real-time information regarding the current trademark rights on Sint Maarten and facilitate the procedure for acquiring rights quickly and efficiently.
The agreement entails that the BOIP will take care of the back-office activities of the Bureau for Intellectual Property of Sint Maarten (BIP SXM). For its part, the BIP SXM will be responsible for the execution of the legal tasks from the Sint Maarten Trademarks Ordinance and disseminating information to the public.
02-04-2014 (Newsletter Issue 2/14)E-filing for Designs/International Trademarks Now PossibleThe Benelux Intellectual Property Office (BOIP) has announced on its website the implementation of e-filing for designs, developed by OHIM´s Cooperation Fund.
E-filing for designs offers a simple five step online registration process, making the design application process easier and quicker for users. Access to the e-filing procedure is provided by "My BBIE" based on an account which can be requested here
Further, BOIP also introduced a new e-filing tool for international trademark applications in conjunction with the World Intellectual Property Organization (WIPO). Paper filing of international trademark applications will no longer be available. Access to the e-filing procedure is provided by "My BBIE".
Source: www.boip.int and www.oami.europa.eu
11-18-2013 (Newsletter Issue 16/13)
Accession to Singapore Treaty
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Benelux Organization for Intellectual Property, on October 8, 2013, of its instrument of accession to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to BOIP, on January 8, 2014.
On that date and in accordance with Articles 26 and 28 of the Treaty, the Member States of BOIP, that is, Belgium, Luxembourg and the Netherlands, will become bound by the Singapore Treaty.
10-15-2013 (Newsletter Issue 15/13)
Singapore Treaty Ratified by LU
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Grand Duchy of Luxembourg, on September 3, 2013, of its instrument of ratification of the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
The Grand Duchy of Luxembourg being a Member State of the Benelux Organization for Intellectual Property, the said Treaty will enter into force with respect to the Grand Duchy of Luxembourg at a later date, in accordance with Articles 26 and 28 of the said Treaty.
09-17-2013 (Newsletter Issue 13/13)Significant Changes to IP PracticeThe Benelux Office for Intellectual Property (BOIP) has announced significant changes to the IP practice starting on or after 1 October 2013.
This affects the following:
- English as a working language: English becomes a working language next to the official languages Dutch and French.
- New way of calculating the opposition period: The opposition period of two months shall be calculated from the date of publication instead of from the first day of the month after the publication date.
- Modification of the period for suspension of oppositions: Extension of the cooling off period on the joint request of both parties will be 4 months instead of 2 months
- Simplification of the procedure for renewal of a trademark: E-filing of renewal application is accompanied with an e-payment module.
There will also be some other changes. The exact date of which is not yet known, but this is expected for the end of the year. It concerns the following points:
- E-filing of international filings
- E-filing of design filings
- Implementation of TMclass
Source: www.boip.int and Landmark Trademark Protection, The Netherlands
09-03-2013 (Newsletter Issue 12/13)
Opposition Proceedings Soon Changed
The Benelux Office for Intellectual Property (BOIP) has announced that the opposition period shall be calculated from the date of publication with effect from October 1, 2013.
This change is related to the fact that trademark applications are no longer published monthly but on a daily basis.
07-01-2013 (Newsletter Issue 10/13)
Singapore Treaty Ratified
The Kingdom of Belgium, has deposited its instrument of ratification of the Singapore Treaty on the Law of Trademarks on June 7, 2013.
The Kingdom of Belgium being a Member State of the Benelux Organization for Intellectual Property, the said Treaty will enter into force, with respect to the Kingdom of Belgium at a later date, in accordance with Articles 26 and 28 of the said Treaty.
06-25-2012 (Newsletter Issue 10/12)
Accession to TLT
The World Intellectual Property Organization (WIPO) has informed that the Government of the Grand Duchy of Luxembourg deposited on May 11, 2012 its instrument of ratification of the Trademark Law Treaty (TLT). The Trademark Law Treaty will enter into force on August 11, 2012.
The Grand Duchy of Luxembourg being the last Member State of the Benelux Organization for Intellectual Property to have deposited its instrument of ratification of the Trademark Law Treaty, the said Treaty will enter into force with respect to the Kingdom of the Netherlands in Europe and the Kingdom of Belgium, on the same date.
03-28-2011 (Newsletter Issue 5/11)Publication of Caribbean Netherlands TMsThe Benelux Office for Intellectual Property (BOIP) now has the possibility to publish the Caribbean Netherlands trademarks. A page has been added to their website. The registered trademarks are visible on this website. All the data concerning a specific trademark can be made visible by clicking the trademark's number. The publication only contains published and registered trademarks. It does not extend to pending applications and/or international registrations. The list of published trademarks can be searched by number, trademark, applicant, filing and expiry date.
To enter the publication, please click here
03-08-2011 (Newsletter Issue 4/11)Country Codes for the Caribbean Netherlands AllocatedThe country codes for the subdivided Antilles used by WIPO and applicants of international trademarks have been made definite.
The Caribbean Netherlands (Bonaire, Sint Eustatius and Saba) was assigned the country code BQ. Curacao was allotted the code CW and Sint Maarten now has the code SX.
Now that the country codes are definite, the AN (Netherlands Antilles) designation will soon disappear from WIPO data. All existing trademarks that formerly bore a Netherland Antilles designation, and therefore have AN as a country code, will automatically be subdivided and assigned the three new country codes (BQ, CW or SX). All new international applications must specify for which part of the former Netherlands Antilles the protection is required.
For further information please click here
01-01-2011 (Newsletter Issue 1/11)
Consequences of Dissolution of Netherlands Antilles
As from October 10th, 2010, the Netherlands Antilles ceased to exist as a political entity. The islands of Bonaire, Saint Eustatius and Saba (“BES islands“) have become part of the Netherlands. These islands, also called Caribbean Netherlands, have become special individual municipalities within the Kingdom of the Netherlands. The BES islands are not covered by a Benelux or EU trademark registration.
Curaçao and Sint Maarten have become autonomous states within the Kingdom of the Netherlands. This can be compared with the status of Aruba. Both Curaçao and Sint Maarten are not covered by a Benelux or EU trademark registration.
Current trademark registrations:
There is a transitional period with respect to the BES islands. Owners of Netherland Antillean trademark registrations have one year after the dismantling, i.e. until October 10th, 2011, to file maintenance applications for the BES islands. A maintenance application needs to be filed with the Benelux Office for Intellectual Property (“BOIP’). This Office has been appointed to manage the Trademark Register for the BES islands.
Curaçao and Sint Maarten
The situation about Curaçao and Sint Maarten is not clear yet. Most likely existing Netherlands Antilles trademarks will automatically be converted into trademarks for the territories of Curaçao and Sint Maarten. However, it is also possible that trademark owners need to file maintenance applications for these islands too within one year after the dismantling (i.e. until October 10th, 2011). Such maintenance application should be filed with the Bureau for Intellectual Property of the Netherlands Antilles.
International Registrations designating Netherlands Antilles
The above-mentioned transitional period is not applicable to International trademark registrations, designating the Netherlands Antilles. As from October 10th, 2010, those International Registrations continued to have effect in the three new territorial entities. The owner of the International registration was not required to file any request to the World Intellectual Property Organization.
Future trademark registrations
The BES islands have their own trademark law called Trademark Law BES.
11-03-2010 (Newsletter Issue 16/10)Application of the Madrid Protocol by the Netherlands AmendedThe Kingdom of the Netherland had extended the application of the Madrid Protocol to the Netherlands Antilles, with effect from April 28th, 2003. As a territorial entity whithin the Kingdom of the Netherlands, the Netherlands Antilles ceased to exist on October 10th, 2010. The territory has been divided into the tree territorial entities of Curaçao, Sint Maarten and the Islands of Bonaire, Saint Eustatius and Saba (BES), each haging a distinctive trademarks legislation and administration within the Kingdom of the Netherlands. The Government of Kingdom of the Netherlands extended the application of the Madrid Protocol to the new independent territorial entities of Curaçao, Sint Maarten and the Islands of Bonaire, Saint Eustatius and Saba effective from October 10th, 2010.
For more information please click here
04-01-2010 (Newsletter Issue 9/10)Accession to Singapore Treaty by NetherlandsThe Kingdom of the Netherlands ratified the Singapore Treaty on the Law of Trademarks on October 2nd, 2009. It entered into force with respect to the Netherlands Antilles, on January 2, 2010.
The said Treaty will enter into force with respect to the Kingdom in Europe at a later date.
Belgium, the Netherlands and Luxembourg are treated as one common area with a uniform trademark law and one trademark office. Since the adoption of the Benelux Trademarks Act in 1971, there are no national trademark laws in any of the Benelux countries anymore.
Legal basis is the Benelux Treaty for Intellectual Property (trademarks and designs) which replaced the Benelux Trademarks Act on September 1, 2006. Trademark protection is created by registration.
The Benelux countries are members of the Madrid Agreement, of the Madrid Protocol and of the European Union.
Nice classification, 11th edition
Registrable as trademarks are word marks, device marks, three-dimensional marks, colour marks, slogan marks and sound marks. Holograms are registrable when capable of being represented graphically.
The application is filed at the Benelux Office for Intellectual Property in The Hague.
Multiple-class applications are possible.
Foreign applicants do not need a local trademark attorney as long as they have an address for service in a member state of the European Union (EU) or the European Economic Area (EEA).
There is no requirement for a power of attorney anymore.
Foreign applicants do not need a domestic registration.
There is only examination on absolute grounds; the official search has been abandoned. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
After the examination on formalities and absolute grounds, the application is published in the online Benelux Bulletin for opposition purposes. The whole procedure takes between 3 and 4 months if there are no complications. There also exists an expedited registration procedure. In this case the mark is registered and published after the formalities check. The mark could in this case still be refused on absolute grounds or due to a successful opposition.
The opposition period is 2 months from the date of publication of trademark application.
Opposition against designation of IR Mark
2 months from the publication date of the application in the WIPO Gazette
A trademark registration is valid for 10 years from the application date and is renewable for the same period.
The grace period for renewals is 6 months from the expiration date of the trademark.
Further practical details are available in our publication on this topic here
If the trademark has not been used within 5 years from registration or has later not been genuinely used during the last 5 years, it may be subject to cancellation before a court of law. Subsequent use of the trademark can restore protection.
Further practical details are available in our publication on this topic here
The official fee for filing a trademark application is EUR 240 for up to three classes and EUR 37 for each additional class under the normal procedure. The fee for the expedited procedure is EUR 193 extra for up to three classes and an extra of EUR 30 for any following class. The fees are for digital filings, for paper filing higher fees are applicable.
(Source for exchange-rates: bankenverband.de
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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here
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We thank the following law firms for their assistance in updating the information provided.
|Word Mark Search (availability)
|Word Mark Search (identical)
|Extended Search (word mark, company name, domain)
|Device Mark Search (availability)
|Trademark Owner Search
|Company Name Search
|Domain Name Search (extended)
|i-Search (word mark availability + legal opinion)
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05-23-2016Landmark Trademark Protection
, Amersfoort, Netherlands
03-18-2015Landmark Trademark Protection
, Amersfoort, Netherlands
11-27-2014Landmark Trademark Protection
, Amersfoort, Netherlands
08-13-2013Landmark Trademark Protection
, Amersfoort, Netherlands
07-15-2012Arnold + Siedsma
, Amsterdam, Netherlands
07-12-2012Landmark Trademark Protection
, Amersfoort, Netherlands
Marks & Clerk (Luxembourg) LLP, Luxembourg, Luxembourg