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news 1 Jun 2018

New administrative cancellation procedure in the Benelux

Trademarks
Effective from 1 June, the Benelux Office for Intellectual Property (BOIP) has started to offer a cancellation procedure: you can now follow an administrative procedure to request the BOIP to cancel trademark registrations in the Benelux register. Until recently, this was only an option if you had lodged regular legal proceedings to make such a request.

This new administrative procedure offers trademark holders a number of appealing advantages:

  • The procedure is considerably less costly than legal proceedings;
  • The procedure is usually completed more quickly;
  • Your regular trademark attorney can assist you in this procedure, which creates:
    • more legal certainty; and
    • more effective enforcement of your trademark rights.

Grounds for cancellation

With effect from 1 June, the Benelux Office for Intellectual Property (BOIP) has started to accept cancellation requests if a trademark: 

  • infringes another, earlier right (including a well-known trademark);
  • has not been in normal use for five years;
  • is descriptive or lacks distinctive character;
  • has become a generic name;
  • is misleading or violates public policy and/or good morals.

In addition, it will become an option in the future to base this procedure on:

  • filing in bad faith;
  • application by an agent or authorised representative without consent;
  • trademarks that concerns a geographical designation.
This new administrative procedure offers trademark holders a number of appealing advantages.

Advantages of cancellation procedure compared to opposition proceedings

Now that the cancellation procedure has come into force, you can oppose a trademark after it has been registered, even after the opposition proceedings have ended, without having to conduct costly and lengthy legal proceedings.

In addition to the aforementioned advantages, trademark registrations can now also be opposed on grounds other than merely infringement of earlier rights. At present, opposition proceedings can only be lodged based on the existence of earlier trademark rights.

Lastly, the cancellation procedure does not come with a cooling-off period (a period in which the parties are offered the opportunity to settle the matter), which opposition proceedings do offer.

Contact with NLO Shieldmark 

Please contact your NLO Shieldmark trademark attorney if you have any questions about this message or want to learn more about your options. We would be pleased to be of further assistance to you.

Contact our experts