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Geography
The Benelux territory covers Belgium, The Netherlands and Luxembourg. It is located in Western Europe and bordered by Germany, France, and the United Kingdom. The three countries are separate jurisdictions but must be considered one jurisdiction for the purpose of trademarks.
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What is a trademark?
In the definition of the Uniform Benelux trademark Law, trademarks are all signs capable to distinguish the goods or services of an enterprise. The law mentions designations, designs, prints, seals, letters, numbers, shapes of goods or their get-up, and surnames. This includes bottle shapes, make-up of labels, and even colours, colour combinations, and with limitation: sounds and smells. Only registered marks are afforded protection. Without registration there is danger that a third party obtains registration of the same or a similar mark and prohibits further use.
International registrations under the Madrid Convention with extension to Benelux and European Community trademark Registrations obtain the same rights as Benelux registrations.
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Company names
In general we advise to register company names also as trademarks. The trade name law affords only protection in the geographic area where the company name is known, whereas the trademark law affords protection in the entire Benelux area, irrespective of where the mark is being used. Also, a company cannot always object to a similar trademark registration, whereas a registered trademark can generally object to the use of a later similar company name.
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Procedure
An application (filed in Dutch or French) is only examined as to form and inherent registrability. Marks lacking distinctiveness may be refused but the Registry may be convinced of the contrary or may be convinced that the mark has been used on such a scale prior to the application that large parts of the relevant public recognize it as a trademark.
So soon as the examination as to form is done (often in a matter of days), the mark is published online. On the first day of the following month, a term of two months starts to run within which the owners of similar registrations may file an opposition (a simplified procedure before the trademarks Registry). if the opposition period is not met, cancellation may still be requested before the full Court.
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Duration
A Benelux trademark registration has a validity of ten years, counting from the day of application, and is indefinitely renewable for the same periods. Renewal can be filed from six months before to six months after the expiration date (with fine).
Classification
Goods and services are divided according to the international classification. Applications may cover any number of classes. There is a class fee for each class over the third.
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Use
The right to a mark in Benelux lapses if no normal use of the mark has been made during five consecutive years. Use only for export suffices. Cancellation of the registration, however, must be ordered by the common Court. If the mark is taken into use after the five year period, the rights in the mark are restored, but it is not possible to oppose against marks that have been registered in the meantime. This may give cause to the appearance of two identical marks in the market. We therefore suggest to make a search prior to taking up use after the five-year period.
Use must take place in the manner in which registration was effected. Small deviations should not affect the validity of the registration. We advice, however, to keep these to a minimum and to check on deviations regularly.
The owner of the mark may have to prove use of the mark in the Benelux territory. We therefore advice to save some invoices and other material proving use (labels, packaging, advertising material etc.) for at least as long as six years.
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®, TM and SM
We advice to use the registered trademark symbol ® where appropriate. Although the symbol has no legal status, the Courts may take the use thereof into consideration. Similarly, TM, respectively SM, indicating unregistered trademark, respectively service mark may be used.
Documents required for application
- List of goods or services according to international classification.
- 5 (colour or black and white) prints if suitable for electronic scanning; otherwise 20 prints (not for word marks); max. size 8 x 8 cm. Normally, however, an E-file suffices (JPG preferred)
Copyright © 1995-2007, Merkenbureau Hendriks & Co. BV All rights reserved.
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