Benelux (BX)
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.
Source: www.wipo.int
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:
BES islands
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.
Source: www.novagraaf.com
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.
Source: www.wipo.int Legal basis is the Benelux Treaty for Intellectual Property (trademarks and designs) which replaced the Benelux Trademarks Act on September 1st, 2006.
The Benelux countries are members of the Madrid Agreement, of the Madrid Protocol and of the European Community.
Trademark protection is created by registration.
Belgium, the Netherlands and Luxembourg are treated as one common area with an 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.
Nice classification, 10th edition
Registrable as trademarks are word marks, device marks, three-dimensional marks, colour marks, slogan marks and sound marks.
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. 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 4 and 6 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.
National:
Oppositions could be filed within a period of 2 months after the first day of the month which follows the date of publication of the mark. An opposition decision can only be appealed at Court.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
2 months. Starting from the first day of the month following the month from the date of publication 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.
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.
The official fee is EUR 240.00 for up to three classes and EUR 37.00 for each additional class under the normal procedure. The fee for the expedited procedure is EUR 193.00 extra for up to three classes and an extra of EUR 30.00 for any following class.
Trademark Licence Agreement
In Benelux Law there are no provisions prescribing the form of a licence agreement. A licence agreement may be concluded orally or in writing. It is advisable to grant a licence in writing for the purpose of evidence. Licensing of unregistered marks is not permitted.
A licence may be restricted to only some of the goods or services covered by the trademark registration and to one or more of the three Benelux countries. The assignment of a trademark does not automatically terminate the licence agreement. There are no statutory provisions prescribing the terms of licensing.
Recordal
There are provisions in law for a recordal of a licence with the Trademark Office. The recordal is only mandatory for purposes of acquiring effectiveness against third parties. There is no time frame for a recordal and no prescribed form or content for a licence agreement. The recordal is published in the Official Gazette and can be accessed online.
Effectiveness
A licence agreement becomes effective and enforceable against third parties upon its recordal in the Trademark Register.
Infringement Proceedings
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. A licensee may only act independently if he has acquired the right to do so from the trademark owner. The trademark owner has the exclusive right to act against infringements but may permit the licensee to act (jointly with him or on his own). If a licensee has acquired permission from the trademark owner to act against infringement, he does need to cite the trademark owner as co-defendant, but he may not act independently without the owner’s consent to protect the licensed rights.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
220,00 € |
50,00 € |
| Word Mark Search (identical) |
60,00 € |
20,00 € |
| Extended Search (word mark, company name, domain) |
650,00 € |
50,00 € |
| Device Mark Search (availability) |
430,00 € |
170,00 € |
| Trademark Owner Search |
140,00 € |
|
| Company Name Search |
360,00 € |
|
| Domain Name Search (extended) |
72,00 € |
|
| i-Search (word mark availability + legal opinion) |
450,00 € |
100,00 € |
The Prices above are S.M.D. Markeur Search Fees
Belgium (BE)Luxembourg (LU)Netherlands (NL)Aruba (AW)On 1 January 1986, Aruba became an independent State within the Kingdom of the Netherlands. Legal basis is the Aruba Trademarks Act, which entered into force on 1 November 1987. The Bureau for Intellectual Property in Aruba is responsible for the registration of trademarks. The international classification of goods and services has been adopted. Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition. According to the Aruba Trademarks Act the right to the exclusive use of a trademark belongs to the person who has made first use of the trademark for the same goods and services. Only officially registered agents at the Bureau of Intellectual Property of Aruba are allowed to file applications. Neither Community Trademarks nor International Registrations are valid in Aruba.
Bonaire, Saint Eustatius and Saba (BQ)Bonaire, Sint Eustatius and Saba (BES Islands) are special municipalities of the Netherlands. Their trademark law is embedded in a separate law, the Wet Merken BES. A separate department of the Benelux Office for Intellectual Property handles trademark registration for the Caribbean Netherlands under the authority of the Rijksdienst Caribisch Nederland (Department of the Caribbean Netherlands). The BES Islands are a former part of the Netherlands Antilles. Owners of former Netherlands Antilles trademark rights have until 10 October 2011 to maintain their rights in the BES Islands. Community Trademarks are not valid in the BES Islands.
Bonaire, Sint Eustatius and Saba can be designated in an International Madrid Registration. The applicable legislation (Wet merken BES) does not provide in any procedure that may lead to a decision to refuse protection in the Caribbean Netherlands. Therefore, protection in the Caribbean Netherlands is granted automatically with the designation: The Benelux Office for Intellectual Property, which is the Office executing the Wet merken BES, will equate any notification by the International Bureau of an extension to a statement of grant of protection.
Curaçao (CW)Curaçao is an autonomous territory of the Kingdom of the Netherlands. It has its own trademark law. A trademark is registered through the Bureau for Intellectual Property on the island. In case the registration with the trademark authority on Curaçao takes place within 6 months after a Benelux registration, the registrant can claim its right of priority. Curaçao is a former part of the Netherlands Antilles. The Curaçao trademark law is identical to the former Netherlands Antilles law. All Netherlands Antilles registrations have been automatically converted into national Curaçao registrations. When renewing a former Netherlands Antilles registration, a choice has to be made between renewal for Curaçao and Sint Maarten or both jurisdictions. Community Trademarks are not valid in Curaçao. To extend an International Registration to Curaçao, the territory has to be designated (with the country code CW) in the International procedure. There is no opposition period against designated International Registrations.
Sint Maarten (Dutch Part) (SX)Sint Maarten is an autonomous territory of the Kingdom of the Netherlands. It has its own trademark law. A trademark for Sint Maarten is registered through the Bureau for Intellectual Property in Curaçao. The former Burau for Intellectual Property for the Dutch Antilles has become the Bureau for Intellectual Property for Curaçao, which office has received the request of Sint Maarten to provide trademark registrations for Sint Maarten during a transitional period of one year. Sint Maarten is a former part of the Netherlands Antilles. All Netherlands Antilles registrations have been automatically converted into national Sint Maarten registrations. When renewing a former Netherlands Antilles registration, a choice has to be made between Curaçao and Sint Maarten or both jurisdictions. Community Trademarks are not valid in Sint Maarten. To extend an International Registration to Sint Maarten, the territory has to be designated (with the country code SX) in the International procedure. There is no opposition period against designated International Registrations.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey07-15-2012
Arnold + Siedsma, Amsterdam, Netherlands
07-12-2012
Landmark Trademark Protection, Amersfoort, Netherlands
08-10-2011
Marks & Clerk (Luxembourg) LLP, Luxembourg, Luxembourg
Dependent Territories07-19-2011
Landmark Trademark Protection, Amersfoort, Netherlands
07-15-2011
Arnold + Siedsma, Amsterdam, Netherlands
Licensing11-02-2011
Eeman & Partners, Brussels, Belgium
Landmark Trademark Protection, Amersfoort, Netherlands