Benelux trademark
On February 25, 2005, Belgium, the Netherlands, and Luxembourg signed the “Benelux Convention on Intellectual Property (Trademarks and Designs)” (hereinafter referred to as the “Benelux Convention”), replacing the previous “Benelux Convention on Trademarks (1962)” and “Benelux Convention on Designs (1966)”. The convention came into effect on September 1, 2006.
According to the Benelux Convention on Intellectual Property, the three countries established the Benelux Organization for Intellectual Property. The organization is supervised by an Executive Board composed of representatives from three member states and has the following responsibilities: (1) to implement the Convention and related implementation regulations; (2) Promote trademark and design protection in the Benelux countries; (3) Perform other tasks as instructed by the Executive Committee; (4) Evaluate and revise relevant legislation on trademarks and designs based on international, regional, and other development situations. The headquarters of the organization is located in The Hague.
The Benelux Office for Intellectual Property (BOIP) is an important component of the Benelux Intellectual Property Organization, responsible for registering trademarks and designs in the Benelux region.
Introduction to the Benelux Intellectual Property Office
The Benelux Intellectual Property Office (BOIP) is an important component of the Benelux Intellectual Property Organization, primarily responsible for registering trademarks and designs in the Benelux region.
The difference between BOIP and other international intellectual property offices is that as the government agency responsible for trademark registration in its member countries, trademarks registered in BOIP take effect directly within the territory of the three countries.
BOIP is headquartered in The Hague and its official languages are Dutch and French.
website：www.boip.int
Telephone：+31 70 349 11 11
Fax：+31 70 347 57 08
mailbox：info@boip.int
address：Bordewijklaan 15, NL-2591 XR The Hague, The Netherlands
Introduction to Benelux Trademark Registration
A trademark is a symbol used to distinguish the products or services of the trademark user from those of other sources. According to the Benelux Convention on Intellectual Property Rights, names, patterns, marks, seals, letters, numbers, the appearance of products or packaging, and other graphic representations used to distinguish products and/or services of different enterprises should be considered trademarks. However, the shape formed entirely due to the nature of the product itself, which can give value to the product or is indispensable for obtaining technical effects, cannot be registered as a trademark. Surnames can be registered as trademarks without violating general law. (Article 2.1 of the Benelux Convention on Intellectual Property Rights)
3.1 Types of trademarks
A trademark should be a prominent symbol, among which the most common are text trademarks and graphic trademarks, and 99% of registered trademarks belong to these two categories. Other types of trademarks that can be registered on BOIP include shape trademarks, color trademarks, and sound trademarks:
In some cases, the three-dimensional shape of the product or package can be registered as a trademark, such as a specially designed perfume bottle.
When people can identify a product or service by color, even a single color or combination of colors can be registered as a trademark, such as the blue color of a camping gas canister.
Advertising music is sometimes well-known, and when people hear it, they immediately know what brand it represents. In this case, sound can be considered a trademark and is eligible for registration (in the form of a staff score).
3.2 Reasons why a logo cannot be registered as a trademark
According to the Benelux Convention on Intellectual Property Rights, a mark lacking distinctiveness cannot be registered as a trademark. The law also stipulates that BOIP has an obligation to reject trademark registration applications in certain circumstances, with the main reasons being:
- The logo is descriptive. If a logo directly represents the characteristics or quality of a product or service, it is descriptive. This is the most common reason for trademark registration applications to be rejected.
- The logo lacks significance. Descriptive markers naturally lack significance. In addition, slogans, single colors, or product shapes may also lack distinctiveness.
- The logo is deceptive. For example, clearly displaying the coffee logo cannot be registered as a trademark for other products such as tea or sleeping pills, as this is misleading to consumers.
- The emblem is the flag, badge or other official emblem of a country or international organization registered under Article 6-3 of the Paris Convention for the Protection of Industrial Property. Such symbols can only be registered on BOIP after being approved and licensed by the relevant country or organization. In practice, this reason for rejection is often related to symbols containing the EU flag (or parts thereof).
- The shape logo overlaps with other intellectual property rights such as design or patents. For example, consumers are more likely to view the shape of a chair or lamp as an exterior design rather than a shape symbol, so such symbols lack distinctiveness.
- Signs are contrary to public order and morality. This situation is very rare, but if it meets the requirements, the court can also declare the registered trademark invalid.
3.3 Ordinary and collective trademarks
A common trademark is a trademark that distinguishes the products or services of a certain operator from other products or services.
A collective trademark is a trademark that distinguishes common features of products or services, such as the pure wool logo WOOLMARK. Collective trademark holders may not use the trademark, but rather supervise other users to comply with certain standards. These standards must be specified in the Regulations for Use and Control of the Trademark when submitting a trademark application.
3.4 well-known trademark
According to Article 6-2 of the Paris Convention for the Protection of Industrial Property, if there is a well-known trademark that has not yet been registered, no third party shall register the trademark or any trademark that may cause confusion with it. Moreover, the owners of the aforementioned well-known trademarks also have the right to take action against trademark infringement. However, the trademark must be well-known to the majority of the public living in the Benelux region.
3.5 trademark protection
The owner of a registered trademark has the right to prohibit any third party from engaging in the following activities without their consent:
Using the same logo as a registered trademark in commercial activities for products or services that are the same as those indicated by the registered trademark;
Using a symbol in commercial activities that may be confused with a registered trademark by the public (where the symbol is identical or similar to the registered trademark, and the product or service indicated by the symbol is identical or similar to the product or service indicated by the registered trademark);
In commercial activities, using signs that are identical or similar to the registered trademark for products or services that are different from those indicated by the registered trademark (where the registered trademark should be well-known in the Benelux region and improper use of the sign will result in unreasonable use of the registered trademark or damage to its distinctive features or reputation);
Not using a certain logo for the purpose of distinguishing products or services (where improper use of the logo would result in unreasonable use of the registered trademark or damage to the distinctive features or reputation of the registered trademark); as well as
Register a mark that is identical or similar to the prior trademark.
Benelux Trademark Registration Procedure
4.1 There are three ways to obtain a valid registered trademark in the Benelux region：
Firstly, apply directly to BOIP for registration of the Benelux trademark.
Secondly, apply for registration of an EU trademark with the European Union Intellectual Property Office (EUIPO). The Benelux region belongs to the European Union, therefore EU trademarks can be used in the region and constitute prior rights against the registration of Benelux trademarks.
Thirdly, apply for international trademark registration in Madrid, designating the Benelux Union or the European Union as the effective region.
Regarding priority, the Benelux Convention on Intellectual Property applies the principles of the Paris Convention for the Protection of Industrial Property, which states that if a similar trademark registration application is filed again with BOIP within 6 months after the first trademark registration application is filed in China, priority can be enjoyed.
4.2 The process of directly registering a trademark in BOIP
- Trademark search
Before filing a trademark application, it is recommended that the applicant search for registered or filed Benelux and EU trademarks to prevent rejection or opposition due to duplication with the aforementioned trademarks or prior applications (even if the application fails, BOIP will not refund the application fee). The available free online search tools include:
The Trademarks Register can search for legally effective trademark applications and registrations within the Benelux countries, as well as EU trademarks and international trademarks designating Benelux as the effective region.
ESearch Plus can search for registered EU trademarks and EU trademark applications.
TMview can search for registered trademarks and trademark application information in EU member states, EU member states, and partner countries outside the EU.
The applicant can also request BOIP to complete the trademark search, but must pay a fee. According to the search request form submitted by the applicant, BOIP can provide the search report to the applicant within about 3 weeks.
- Select trademark classification
The selection of trademark classification is an important step in the registration process, as the applicant needs to specify the category of products and services in the trademark registration application to determine the scope of protection enjoyed by the trademark. The Benelux trademark classification applies the classification method of the Nice Agreement on the International Classification of Goods and Services for the Purposes of Trademark Registration, and the following online tools can be used to help determine the trademark classification:
TMclass is a general trademark classification database jointly executed and maintained by EUIPO and various related institutions in Europe, containing over 60000 terms and covering all content of the Nice classification.
MGS • Madrid Goods&Services Manager, a trademark classification tool provided by the World Intellectual Property Organization, has added 30000 terms in addition to all the content of the Nice Classification.
- Submit an application
Trademark applications can be submitted directly to BOIP or through domestic regulatory agencies in the three countries. Paper materials can be submitted by mail, fax, or in person, or online applications can be submitted through the BOIP website (with a 15% lower cost than paper applications).
When applying online, the applicant must first register an account. Please refer to the short video provided by BOIP on how to register a trademark online
Play video
The required materials for the application include:
Application form, including the applicant’s address, name, organizational form (applicable to legal persons), agent’s name and address, trademark design, and explanation about the trademark. Please refer to the filling instructions for details;
List of products and/or services to which the trademark is intended to apply;
If it is a collective trademark, the trademark usage and management regulations should be submitted;
If priority is requested, a priority declaration should be submitted.
Within one month after submitting the application, the application fee should be paid to BOIP.
- Determine the application date
BOIP will record the date and time of receipt of the trademark application and send a confirmation letter to the applicant. The information in the application form will be entered into the system, and the applicant can check the progress status of the trademark application through the Trademarks Register.
BOIP conducts a preliminary examination of the application materials, mainly checking whether the trademark is clearly presented, whether the name of the applicant (individual or company) is stated, whether the description of the products and/or services is clear, and if it is a collective trademark, whether the trademark usage and management regulations have been submitted. These are the minimum requirements for trademark applications, and if they are not met, the relevant application will be considered never submitted.
BOIP should give the applicant at least one month to make corrections and modifications to the application materials. During this period, an extension can be applied for, but the maximum period shall not exceed six months from the date of issuance of the examination opinion.
The application date is the day when the minimum requirements mentioned above are met, but if the applicant has not yet paid the application fee at this time, the application date will be postponed until BOIP receives the fee. For applicants who wish to establish priority as soon as possible, timely payment should be made to BOIP.
- Public Trademark Application
Once the application date is determined, BOIP will assign an examiner to the application to check whether the application content meets all formal requirements. If there are any issues, the examiner will notify the applicant to provide additional materials. At the same time, the products and/or services described in the application will be determined as the trademark classification that needs to be specified according to the Nice classification.
Once the application date is confirmed and the trademark classification is determined, BOIP will publish the trademark application and issue a confirmation letter to the applicant. The publication date and content of a trademark application can be found in the Trademarks Register, including the date and application number of the trademark application, the names and addresses of the applicant and agent (if any), the category of the trademark, product and/or service, the type of trademark, the conditions for use of the collective trademark, a description of the trademark color elements, and the deadline for submitting objections.
If there are errors in the published information, BOIP will make modifications and re publish it. The objection period starts from the date of re publication, but objections submitted before this date do not need to be resubmitted.
Openness is the beginning of substantive examination procedures.
- Assessment on absolute grounds
BOIP will evaluate the trademark registration application based on absolute rejection reasons. If the applied logo cannot be used as a trademark, such as lacking distinctiveness, BOIP has an obligation to refuse to register the logo as a trademark.
The applicant will have up to 6 months to submit written objections to the rejection decision of BOIP. If BOIP still rejects the application, the applicant may file a lawsuit against BOIP’s decision with the appellate courts located in The Hague, Brussels (Hof van Beroep/Cour d’Appel), or Luxembourg (Cour d’Appel).
- Objections
After the BOIP public trademark application, anyone can raise an objection within 2 months to oppose the registration of the trademark. The objector can apply online or submit a paper objection application, and is required to pay an objection fee.
The trademark applicant and objector will first have the opportunity to resolve the issue on their own. If a settlement cannot be reached, BOIP will make a decision after both parties have submitted their defense opinions.
BOIP first examines whether the objection should be accepted, and the acceptance requirements are stated in Article 1.18 of the Implementing Regulations of the Benelux Convention on Intellectual Property Rights.
If BOIP decides to accept the objection, it will notify the objector and the trademark applicant.
The objector and trademark applicant shall submit relevant supporting materials within 2 months after receiving the notice. If relevant supporting materials are not submitted, it shall be deemed as a waiver of objection. If proof materials are submitted, BOIP should forward the opponent’s proof materials to the trademark applicant, who has 2 months to make a written defense and submit proof of the use of the relevant logo. (Refer to Article 1.29 of the Implementing Regulations of the Benelux Convention on Intellectual Property Rights)
If BOIP considers the objection to be valid, it may reject the trademark application or request the applicant to modify the applied trademark; If the objection is deemed unfounded, it shall be rejected.
Regarding the decision of BOIP, all parties may file a lawsuit with the appellate court mentioned above.
It should be noted that trademark applications can be filed in the official languages of BOIP – Dutch and French, as well as in English. If the applicant uses English and the objector does not agree to use English, the objection procedure needs to be conducted in Dutch or French. If litigation occurs in the future, the official language of the relevant judicial authorities needs to be used.
- Registration
If the trademark application fully complies with legal requirements, BOIP will register the trademark after the public disclosure period expires. It usually takes 3 months to complete the entire process, and if there are rejections or objections during the application process, the time will be extended.
On the day the trademark is registered, the applicant also obtains exclusive rights to the trademark. But in the event of a dispute, the determination of which party obtained the trademark first is based on the date of application of the trademark.
The protection period for a registered trademark in Benelux is 10 years, starting from the date of application and can be renewed indefinitely. The right holder may apply for renewal within 6 months before the expiration of the term (at the latest 6 months after the expiration of the term), and the protection period shall be extended by 10 years for each renewal.
- Accelerated registration
Applicants can pay additional fees to accelerate registration, and after completing the relevant procedures, they can complete the trademark registration within a few days. However, it should be noted that in this case, BOIP’s evaluation and opposition procedures for trademark registration applications based on absolute rejection reasons will be conducted after registration, which may still result in the cancellation of the trademark registration.
For more content, please refer to the BOIP website.
Introduction to Benelux Trademark Official Fees
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| Search fee |
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| Renewal fee |
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| Objection fee |
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For more projects and amounts, please refer to the expense table.