Trade Marks 2022 Comparisons

The statutory law is the Benelux Convention on Intellectual Property (BCIP), version 1 March 2019, together with several Implementing Regulations. This convention serves as uniform national/regional law for the three Benelux countries.

The Benelux is a member to all relevant international trade mark treaties/agreements/conventions.

Self-executing

• The Paris Convention for the Protection of Industrial Property;
• the Madrid Agreement concerning the International Registration of Marks;
• the Madrid Protocol;
• the Locarno Agreement;
• the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
• the Community Trade Mark Regulation.

Not Self-executing

• The European Trade Marks Directive;
• the EU IP Enforcement Directive; and
• the TRIPS Agreement.

The BCIP distinguishes individual marks, collective marks and (from 1 March 2019) certification marks. A certification mark is a species of collective marks. Benelux law protects both product marks and service marks.

Furthermore, the BCIP (Article 1.1, paragraph e) with respect to registration requirements, distinguishes word marks, figurative marks, combinations of word and figurative marks, 3D-marks and "different types of trade marks". Since the BCIP acknowledges the possibility to register "a different type of trade mark" (without limitation) there is no exclusion which would be an impediment for the registration of any type of mark, as long as the trade mark is able to define sufficiently clearly and accurately what is claimed. Therefore, for example, it is possible to register motion marks or sound marks. Trade dress as such is not a known concept under the BCIP.

Under Benelux trade mark law, there are no specific marks which are protected by statute in a way differently than ordinary marks.

Article 2.2 of the BCIP states that without prejudice to the right of priority provided for by the Paris Convention or the TRIPS Agreement, the exclusive right to a trade mark shall be acquired by registration of the trade mark that has been filed in the Benelux territory.

If a specific mark is famous outside the Benelux but not yet in use or registered, the BCIP acknowledges possible rights of priority under the Paris Convention. Thus, a certain degree of protection might be granted to these rights.

The term of protection is ten years from the date of filing and may be renewed, indefinitely, for periods of ten years at a time (Article 2.9 of the BCIP).

The exclusive right of the trade mark holder is exhausted once a product has been put on the market for the first time in the European Economic Area (EEA) under that trade mark by the holder, or with their consent, unless there are legitimate reasons for the holder to oppose further commercialisation of the goods. A legitimate reason to oppose further trading would be where the condition of the goods is changed or impaired after the goods have been put on the market (Article 2.23 of the BCIP).

Under Benelux trade mark law, there is no requirement to use a trade mark related symbol.

A trade mark can be fully or partially transferred (Article 2.31 of the BCIP) via a deed of transfer. The Benelux Office for Intellectual Property (BOIP) can record a full or partial transfer in the register as a paid service.

An assignment requires an agreement or deed in writing. An assignment must cover the whole of Benelux territory.

In order to cause the assignment to have effect vis-à-vis third parties the assignment must be recorded in the register, which can be done at the request of the holder or the assignee.

Pursuant to the BCIP and under the civil laws of any of the Benelux countries, no specific requirements or restrictions apply to licensing a trade mark. There is no requirement that a licence agreement should be in writing.

In the Netherlands, freedom of contract is an important basic principle. Parties may therefore in principle agree on any form of licence, eg, (non-)exclusive licence, worldwide, territorially limited licence, (non-)assignable, or perpetual or limited in duration.

Since a registration system is in place, a third party must be able to rely on the Trade Mark Register. Therefore, an assignment and/or a licence needs to be registered at the BOIP in order to have effect vis-à-vis third parties. In the event an assignment/licence is not registered at the BOIP, the assignment/licence (or ownership) cannot be invoked against a third party (Article 2.33 of the BCIP). The same applies during the gap between the assignment taking place and its registration; during that time there will be no third-party effect.

According to Article 2.31 of the BCIP, an assignment must be between living persons or existing entities, confirmed in writing and concern the whole Benelux territory. If one and/or more of the requirements have not been met, the assignment shall be null and void.

Article 2.31, paragraph 3 of the BCIP states that a transfer of the whole of the undertaking shall include the transfer of the trade mark as well, except in the event of a specific agreement to the contrary, or in the event circumstances clearly dictate otherwise.

In general, the legal requirements for a valid transfer apply, ie, a valid title, delivery of possession and power of disposition.

With respect to licences, no specific requirements for a valid licence apply. Since, under Dutch law, a regular agreement has no prescribed form, a licence may, in principle, be agreed upon orally.

It is possible to assign an application during the application process. This can be done by an assignment deed and a request to the BOIP to change the name and address details of the owner or via a digital form on the BOIP website.

It is also possible to grant a licence in relation to a trade mark application during the application process. It is not possible to request recordal of such licence; a trade mark right only arises once the trade mark has officially been registered by the BOIP.

A trade mark may, independently of the undertaking, be given as security and may be the subject of rights in rem. Furthermore, a trade mark may be levied in execution (Article 2.32bis of the BCIP).

Within the Benelux countries, a registration is a prerequisite for a trade mark to enjoy protection.

There are different standards for registering different types of trade marks. Trade marks that have ab initio distinctive character in relation to the goods and services applied for, may be registered. Trade marks lacking distinctive character may only be registered if they have acquired distinctiveness through use.

The BOIP keeps one register of trade marks. This register is publicly available via www.boip.com, and shows all Benelux trade mark registrations, all Community trade mark registrations and all international trade mark registrations for which the Benelux has been designated as a territory of protection.

In the Benelux, it is normal and common practice to search for prior trade marks before applying to register a mark. The sources to be searched depend on the situation and wishes of the applicant. In any event, the Benelux trade mark register, the EUIPO trade mark register and the WIPO trade mark register should be searched.

The term of protection is ten years from the date of filing and may be renewed, indefinitely, for consecutive periods of ten years at a time (Article 2.9 of the BCIP).

Renewal takes place upon payment of the renewal fee, to be paid during the six months preceding the expiry of the trade mark registration. If necessary, it is also possible to renew the trade mark after the term has lapsed; the fee may still be paid within six months after the expiry date of the registration, provided that an additional fee is paid simultaneously (Article 2.9 of the BCIP).

Under Benelux law, a trade mark may be updated or refreshed like any other trade mark, as long as the updating or refreshing does not result in such a change of elements that it affects and alters the distinctive character of the mark in the form in which it was registered (Article 2.23 bis, paragraph 5 sub a of the BCIP).

In the Benelux countries, individuals, as well as legal entities and public bodies can apply for a trade mark registration. Residence within the Benelux is no requirement.

The application requirements for filing a trade mark follow from the Implementing Regulation of the BCIP. Optionally, the applicant can add a description (maximum 50 words) of the distinctive elements of the trade mark. Documents may be submitted electronically or as a hard-copy (Article 3.4 Implementing Regulation of the BCIP).

Every sign that is able to sufficiently clearly and accurately indicate what is claimed and what is protected as a trade mark, can be registered as a trade mark. Since the BCIP acknowledges the possibility to register "different types of trade mark" (without limitation) there is no exclusion which impedes the registration of any type of mark, as long as the trade mark is able to clearly and accurately define what is claimed and as long as the sign does not fall under any of the exclusions listed in Article 2.2 bis of the BCIP.

It is possible to register, for example, pattern marks or sound marks.

It is also possible to file multi-class applications.

The Benelux system does not have a requirement of use prior to registration. If the holder elects not to start using a Benelux trade mark in the first five years following registration, such non-use will not have any consequence for the validity of the trade mark. This follows from Article 2.27 of the BCIP, which provides for the possibility to claim that a trade mark must be revoked in case no genuine use of the trade mark has been made for an uninterrupted period of five years. 

The Benelux system allows for the registration of series marks as a range of trade marks which aim to identify a particular distinctive element as a "landmark" for the relevant public. The protection of series marks is confirmed in case law.

The BOIP does not consider the existence of prior rights in its examination of an application, unless an opposition has been lodged on the basis of a prior trade mark registration which is considered to take precedence.

Any third party who is the proprietor of an earlier trade mark registration can lodge an opposition within two months of application publication. There are no qualification requirements in this respect.

The opposition procedure starts with filing an opposition form. If the opposition is admissible on formal grounds, the cooling-off period of two months will commence. If no settlement has been reached within the cooling-off period (which can be extended upon request), the opposition procedure will officially commence. The opponent must explain in writing the possible confusion with their trade mark (submissions). The defendant will then be able to respond.

Instead of reacting to the submissions, the defendant can choose to ask the opponent to provide proof of use if the opponent’s trade mark is more than five years old. If proof of use is requested, the opponent has to provide documents that demonstrate genuine use of the trade mark in the five years prior to the date the opposition was filed.

Following either of the defendants' actions, the BOIP will make a decision: opposition deemed well-founded, opposition deemed unfounded or opposition partially justified.

In the event the applicant did not comply with all requirements following from the implementing regulation of the BOIP, the applicant will be given an opportunity to rectify (Article 2.5, paragraph 2 of the BCIP). It is possible to limit the goods and services and to revoke a trade mark application during the process of registration. This can be done via a digital form on the BOIP website.

It is not possible to modify a sign constituting the trade mark either during the period of registration or at the time of its renewal (Article 2.9 of the BCIP).

It is possible to divide a trade mark registration or trade mark application.

A Benelux trade mark may be transferred in respect of some or all of the goods or services for which it is registered (Article 2.31, paragraph 1 of the BCIP). A trade mark application is also transferrable.

A request for modification of register data relating to a Benelux trade mark application or registration must be sent to the BOIP, indicating the number of the registration, the name and address of the holder, signature and where appropriate the name and address of the authorised representative.

Furthermore, a copy of the deed of transfer must be provided (Article 3.1 of the Implementing Regulation).

If an application is filed containing incorrect information, any interested third party can make mention of this and request its correction. The BOIP makes decisions on such issues.

In the trade mark application is filed in bad faith (Article 2.4, paragraph f of the BCIP), either the BOIP or any national court of law can decide that the trade mark is null and void.

The absolute grounds for refusal or invalidity follow from Article 2.2 bis of the BCIP. These grounds include, without limitation, trade marks devoid of distinctive character, trade marks which are contrary to public policy and trade marks which are of such a nature as to deceive the public.

A trade mark shall be declared invalid where the application for registration of the trade mark was made in bad faith, when the application included fraudulent material, or if marks have an immoral or offensive meaning.

A trade mark shall not be refused registration in accordance with paragraphs b, c or d, if before the date of application for registration following the use which has been made of it, it can be deemed to have acquired distinctiveness. A trade mark shall not be declared invalid for the same reasons, if before the date of application for a declaration of invalidity, following the use which has been made of it, it has acquired distinctiveness.

Usually, if the BOIP has doubts on the registrability of a trade mark, it will notify the applicant of its intention to refuse the registration (preliminary refusal) on absolute grounds in whole or in part. The applicant will have the opportunity to respond with comments (Article 2.11 of the BCIP).

In the event the BOIP refuses the registration, the applicant is entitled to appeal the decision before the Benelux Court of Appeal within two months following the notification of the refusal.

The Benelux countries participate in the Madrid system.

International trade marks are registered with the WIPO. If an international application is based on a Benelux trade mark, the application for an international trade mark may be made via the BOIP. The applications are filed via the BOIP website. The BOIP commonly checks whether the application is compliant and identical to the base Benelux application. After this check, the WIPO takes over the processing of the international application.        

Following the publication date of the filing, for a period of two months the application is open for opposition by holders of earlier rights (Article 2.14 of the BCIP).

An opposition may be submitted to the BOIP by the applicant or holder of a prior trade mark against a trade mark which in order of priority ranks after its own or may give rise to confusion with its well-known trade mark (Article 6 bis of the Paris Convention).

A potential opponent can request extension/suspension of the opposition procedure, solely on joint request with the trade mark owner. 

The legal grounds for filing an opposition follow from Articles 2.2ter, paragraph 1 and 3 of the BCIP.

The BCIP recognises dilution as part of a ground to start an infringement procedure (Article 2.20, paragraph 1 sub c and d of the BCIP).

The BCIP does not recognise dilution as a ground to oppose a trade mark or to prevent use of a mark in a lawsuit.

Any applicant or holder of a prior trade mark may file an opposition.

The opponent does not need representation by a lawyer or trade mark attorney. The office fee (without additional costs with respect to for example supplemental rights invoked or requests to suspension) per opposition filed is EUR1,045.

The average attorneys’ costs of a straightforward opposition will range from EUR1,500 to EUR2,500 (excluding VAT, translation costs and the opposition fee), provided that the dispute will be concentrated on the main issue (collision with an earlier mark) and there will not be a long drawn discussion on related issues that may be brought up, such as actual use of the trade mark.

The holder of the earlier trade mark has to file an opposition form. If the opposition is admissible, the parties will receive a notification of admissibility, following which there will be a two months cooling-off period and a one-month period within which a decision will be made regarding the language preference of the defendant, if any.

Notification of Commencement

If no settlement is reached during the cooling-off period, the parties will receive a notification of commencement of the procedure. In the two months following the commencement of the procedure the opponent may submit arguments. If arguments are submitted, the defendant will get the opportunity to reply within two months following the arguments of the opponent.

Proof of Use

If proof of use is requested by the defendant, the opponent must provide this within two months of the request. If proof is provided, this is sent to the defendant who will have an opportunity to comment. The BOIP will forward these to the opponent. After receiving a reaction from the opponent (or in the absence thereof), the BOIP may request additional arguments or documents. Following this process, the opposition is ready for decision.

BOIP Declarations

The BOIP may declare the opposition is well-founded, partially well-founded, or reject the opposition. A decision from the BOIP is open to appeal for two months following the decision.

Opposition proceedings are essentially a written exchange of arguments and evidencing documents. They do not provide for an oral hearing. The BCIP does not provide for rules concerning discovery.

An opposition decision from the BOIP is open to appeal at the Benelux Court of Justice for a period of two months following the decision (Article 1.15 bis of the BCIP).

Within two months following the date the application was sent, the defendant must lodge a statement of defence. The application and the statement of defence may be followed by a reply and rejoinder. Thereafter, the President of the Chamber that will decide the matter shall prescribe a period within which such pleadings are to be submitted with the Court Registry (Benelux Court Rules of Procedure (BCRP), Article 4.5 and 4.6).

Though proceedings before the BenCJ are primarily conducted in writing, an opportunity for oral arguments may be allowed at the request of any party or on the basis of a decision ex officio (Article 1.30 of the BCRP).

There is no general statutory limitation or time period within which to file revocation/cancellation actions in the Benelux.

However, depending on the basis for the revocation or cancellation a limitation period may apply. For example, in case the holder of a registered mark has knowingly acquiesced in the use of a younger trade mark for more than five years, he is no longer in a position to file an action for revocation of that younger trade mark.

The right to a trade mark shall be revoked within the limits laid down in Article 2.27 if, following the date of registration:

• within a continuous period of five years, it has not been put to genuine use in Benelux territory in connection with the goods or services for which it was registered, and there are no proper reasons for non-use;
• in consequence of acts or inactivity of the holder, the trade mark has become the common name for a product or service; and/or
• in consequence of the use made of it by the holder of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public.

Any interested party may invoke revocation/annulment of the right in a trade mark in the cases provided for by Article 2.26 paragraph 2 of the BCIP.

Any interested party, including the Public Prosecutor, may invoke the invalidity of a trade mark before a civil court in the cases provided for by Article 2.2bis, 2.2ter, paragraph 1 and 3 and Article 2.27 of the BCIP. This follows from Article 2.28 of the BCIP.

Any interested party may invoke the revocation/annulment of a trade mark before the BOIP in the cases provided for in Article 2.2bis, Article 2.2ter, paragraph 1 and 3 and Article 2.27 of the BCIP. 

Revocation/cancellation proceedings may be initiated by any third party with a justified interest.

Revocation/cancellation action can be brought both before the trade mark office and before the civil courts.

Partial revocation/cancellation is possible (Article 2.30, paragraph 2 of the BCIP). This article states that the declaration of invalidity or revocation shall be limited to one or more of the goods or services in respect of which the trade mark is registered, if the grounds for invalidity or revocation affect only some of the goods or services. Even within a single class, the trade mark may be cancelled for specific goods or services in that class.

In revocation/cancellation proceedings it is always possible to file a claim amendment, provided that the holder is not unduly hampered in defending the action.

This is only possible before civil courts since the BOIP has no jurisdiction to decide on infringement actions.

It is commonplace that a trade mark holder starts an infringement action and that the alleged infringer files a counterclaim for revocation or cancellation of the trade mark.

Pursuant to Article 2.28 of the BCIP, any concerned party is authorised to start nullity proceedings in court. If proven that the application for the trade mark must be deemed fraudulent, the trade mark will be revoked.

With the exception of certain specific terms of limitation (see 6.1 Timeframes for Filing Revocation/Cancellation Proceedings) there is no general fixed time frame for bringing an action based on a registered trade mark, but depending on the circumstances the trademark holder may be considered to have acquiesced in or accepted a given situation and forfeited his right to file an infringement action.

The BCIP does not provide for protection of unregistered trade marks, with the exception of the protection of well-known marks under the Paris Convention.

The holder of a trade mark can act against conflicting applications by starting an opposition procedure before the BOIP. In addition, a trade mark holder may invoke annulment or revocation of a trade mark at BOIP. The holder of a registered trade mark may, against infringements in the common courts, either through preliminary injunction (PI) proceedings or proceedings on the merits.

A trade mark holder can also start proceedings on the merits.

Furthermore, in certain circumstances a trade mark holder is entitled to seize infringing products or accounts relating to the infringement. 

A trade mark owner can bring claims for dilution and cybersquatting on the basis the "regular" infringement article, Article 2.20 of the BCIP. 

The necessary parties to an action for infringement are the trade mark holder and the alleged infringing party.

Pursuant to Article 2.21, paragraphs 1 to 4 of the BCIP, the licensee shall have the right to participate in an action brought by the holder of the trade mark in order to obtain compensation for damages directly incurred, or in order to obtain a proportion of the profit made by the defendant. The licensee may bring independent action only if they have obtained an authorisation from the holder for that purpose.

The licensee shall be authorised to exercise the powers referred to under Article 2.22, paragraph 1 of the BCIP (additional claims, amongst others a recall, removal or destruction of the infringing goods), provided that these are in order to protect the rights which they have been permitted to exercise and provided that they have obtained permission from the holder of the trade mark for that purpose.

It is generally not possible to stop infringement before a trade mark is registered, which may include a provisional registration.

In the Netherlands it is possible to have collective liability established in court (collective action). It has also been possible to declare a collective settlement, between an interest group and a party, held liable to be generally binding for all victims on the basis of the Collective Settlement of mass claims.

Since January 2020, the Mass Claims in Collective Action Act entered into force. The court is able to adjudicate a collective compensation claim. 

To be admissible, interest groups will have to meet several requirements with respect to funding, representatives and governance, in order to be admissible. The collective action is subject to further requirements compared to regular law suits. It must be sufficiently plausible that submitting the collective action is more efficient and effective than initiating individual actions.

There is no requirement to send a demand or warning letter, nor to engage in mediation proceedings. However, if proceedings are started without issuing a demand letter, this may have consequences for award of legal fees and costs.

A trade mark owner is not allowed to make frivolous claims purporting infringement of a trade mark, eg, in case the trade mark owner is aware or should be aware that their action is based on a trade mark that is not valid or no longer valid. Making frivolous infringement claims may be considered an unlawful act (Article 6:162 of the Dutch Civil Code).

Furthermore, trade mark owners (like any other party in a lawsuit) are not allowed to abuse/misuse any of their subjective rights. This follows from civil procedural law. 

In most types of infringement cases, proceedings are started with a writ of summons. This should include all the infringement arguments and make reference to available evidence to the fullest extent possible. Documents, including the available evidence, should be submitted to the court and the defendant at the first hearing. This rule applies to all types of civil proceedings and there are no further specific rules applying to trade mark infringement proceedings or other types of law suits involving trade marks.

Claim amendment at a later stage is possible unless it results in a disadvantage for a defendant to bring their arguments to counter a claim.

A defendant may bring a counterclaim in the same proceeding (eg, a nullity claim in response to an infringement claim) and both claims will be handled and decided simultaneously.

The BOIP has no jurisdiction to decide on infringement actions.

In regular proceedings, the Dutch civil courts have jurisdiction to hear trade mark matters at first instance. At second instance, Dutch Civil Courts of Appeal have jurisdiction. At third instance, the Supreme Court has jurisdiction.

In cases handled in the common courts, the cases are heard by state appointed judges. Most of the district courts and courts of appeal have judges who focus on IP matters. Due to its exclusive jurisdiction for EU trade mark and design matters, the Hague District Court has specialised judges.

There is no requirement to send a demand or warning letter, nor to engage in mediation proceedings. However, if proceedings are started without issuing a demand letter, this may have consequences for award of legal fees and costs.

Fees and Costs

Obviously, the costs depend on the nature and complexity of the case.

Although there is no requirement, usually, one or two warning letters will be sent prior to filing a lawsuit. The costs for a warning letter can be estimated to be in the range of EUR1,000 to EUR1,500.

Costs for possible evidence notarisation depend on the type of notarisation.

In principle, decisions of the BOIP are not binding upon Dutch Courts. However, practice shows that the line of the BOIP is often followed.

An alleged infringer can start a declaratory judgment proceeding, eg, to obtain as declaratory right of non-infringement. Another possibility is to start a declaratory judgment proceeding in order to obtain a declaration of invalidity or cancellation.

It is no longer possible to file a protective brief in trade mark matters, because the courts considered protective briefs to be too much of an administrative burden.

The option for an alleged infringer to post a bond is provided for in the law (Article 2.22, paragraph 3 sub c), but very rarely used.

There are no special procedures, remedies or statutes addressing counterfeit marks within the Benelux. 

The BCIP and the BCIP Implementing Regulations provide for special procedural provisions concerning proceedings that are conducted by the BOIP (eg, proceedings to overcome a refusal by the BOIP and opposition proceedings before the BOIP).

In principle it is necessary to establish that the defendant has used the sign as a trade mark, in contrast to a mere descriptive use. An exception to this situation (Article 2.20, paragraph 1 sub d of the BCIP), is the possibility to act against use of a sign for purposes other than distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the trade mark (the famous Benelux “sub d” form of infringement).

The likelihood of confusion of the public, which is defined as the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings, must be appreciated globally, taking into account all factors relevant to the circumstances of the case, including the degree of distinctiveness of the older mark and the sign, the degree of similarity between trade mark and sign (visually, phonetically and conceptually) and the degree of similarity between goods and services concerned.

To the extent that such acts can be considered to cause confusion or to be damaging for the reputation of the registered trade mark or to draw an unjustified benefit from the registered trade mark such claims may be brought under the general infringement Article 2.20 of the BCIP.

Within the Benelux countries, a registration is a prerequisite for a trade mark to enjoy protection. Unregistered trade marks are not protected.

Defences against infringement include priority, objection for non-use, bad faith, fair use (due cause), parody, own-name defence and all other restrictions that apply to the trade mark owner asserting its rights.

Several articles of the BCIP provide for restrictions on the trade mark holder in asserting its rights against others.

Third-Party Use

Article 2.20, paragraph 1 sub c and sub d of the BCIP provides that, in the event that use of the sign by a third party is with due cause, the trade mark holder is not able to prohibit this third party’s use.

Amongst others, bona fide use in good faith, freedom of press, freedom of expression or other fundamental rights may constitute a due cause for using the sign.

Exclusive Rights

Article 2.23 of the BCIP provides for further limitations of the effects of the exclusive right. The exclusive right shall not imply the right to challenge a third party over the use, in the course of trade, of its name and address, indications concerning the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or rendering of the service or other characteristics of the goods or services; and/or the trade mark where it is necessary to indicate the intended purpose of a product or service.

The exclusive right to a trade mark shall not imply the right to prohibit use in the course of trade of a similar sign which draws its protection from a prior right of local scope, if such right is recognised by the legal provisions of any Benelux country, within the limits of the territory in which it is recognised. Nor shall it imply the right to prohibit use of the trade mark for goods which have been put on the market in the European Community or EEA under that trade mark by the holder or with its consent, unless there are legitimate reasons for the holder to oppose further commercialisation of the goods.

Lack of Use

Article 2.24 of the BCIP provides that the holder of a prior trade mark who has acquiesced for a period of five successive years, in the use of a registered later trade mark while being aware of such use, shall no longer be entitled to prohibit the use of the later trade mark under Article 2.20, paragraph a, b and c BCIP, in respect of goods or services for which that trade mark has been used, unless the later trade mark was filed in bad faith.

Article 2.29 of the BCIP provides that the holder of a prior trade mark who has acquiesced, for a period of five successive years, in the use of a registered later trade mark while being aware of such use, shall no longer be entitled to invoke the invalidity of the later trade mark on the basis of its prior right under Article 2.28, paragraph 3 sub a of the BCIP, unless the later trade mark was filed in bad faith.

The Dutch legal system provides for the possibility of hearing witnesses, obtaining a preliminary expert report and the seizure and exhibition of documents (Article 843a Dutch Civil Procedure Code (DCPC)).

Witnesses and Expert Reports

Even if proceedings are not pending, the court can be requested to hear witnesses. A court may order a preliminary witness examination at the request of one of the parties. Another mechanism is a preliminary expert report. A party may wish to have investigated an issue by an expert. Usually, an expert report will be the basis for the writ of summons for proceedings on the merits. Courts are not bound by these reports.

It should be noted that a preliminary expert report is not common practice with respect to trade mark issues.

Seizure of Evidence

The Benelux legal systems provide a legal basis for evidence seizures in accordance with their respective procedural laws, followed by a claim for exhibition or inspection by an independent expert (eg, Article 843a of the DCPC).

Such evidence collection proceedings may be initiated in pending proceedings, but may also be initiated in independent proceedings such as preliminary injunction proceedings or before initiating proceedings. Disclosure of documents can be claimed by each party with whom the relevant legal relationship exists. It is also possible to claim the disclosure of records of a third party who has relevant records at their disposal.

In the Benelux, it is common practise to make use of market surveys and marketing experts. The general attitude of the courts is that the value of surveys must be assessed carefully and, depending on the design and way in which surveys are conducted, they regularly encounter criticism for being biased and/or not being sufficiently objective.

Under specific circumstances, trade mark infringement can constitute a criminal offence on the basis of Article 337 of the Dutch Criminal Code, which states that any person who intentionally imports, conveys in transit or exports, sells, offers for sale, delivers, hands out or has in store (amongst others), goods, packaging or containers that falsely bear the trade name of another person or the trade mark to which another person is entitled. Punishment is a term of imprisonment not exceeding one year or a fine of a maximum of EUR87,000.

In the event of intentional trade mark infringement, the trade mark owner must report this infringement to the Police. The Police will start an investigation and all findings will be recorded in an official report which will be submitted to the public prosecutor. The public prosecutor will then make an assessment on whether the facts of the case are clear, whether or not the evidence is sufficiently strong and whether or not the case should go to trial.

If the case goes to trial, a summons will be issued following which the accused will have an opportunity to lodge a written objection to the allegations made. In the event the objections are deemed well-founded, the accused will (fully or partially) not be prosecuted. In that event, the criminal case will not be dealt with any further.

If the objections are not deemed well-founded, the case will be heard by the judge at the place and time as mentioned in the summons. Depending on the seriousness of the matter judgement may be given orally directly at the end of the hearing.

The typical costs for bringing a straightforward infringement action to conclusion in first instance in a case on the merits can be estimated between EUR15,000 to EUR25,000.

The typical costs for bringing a straightforward infringement action to conclusion in a preliminary injunction procedure can be estimated between EUR7,500 to EUR15,000.

On the basis of Article 1019h of the DCCP, all costs for legal assistance (including attorneys fees) are "fully recoverable" in trade mark cases in the Netherlands, to the extent that these costs are reasonable and proportional. However, in practice the cost awards are calculated and rendered in accordance with a table of so-called "indicative fees", which usually provide for compensation of an amount between 20 to 50% of the actual legal costs incurred by the winning party.

If a lawsuit also involves elements in dispute which must be considered unrelated to intellectual property rights (for example unlawful act), then a percentage will be allocated to each principle and the costs will be divided per principle and will be awarded according to the applicable costs regulation.

Within the Benelux, interim as well as preliminary instructions (PI) are available for a trade mark owner.

In order to successfully obtain a PI in the Netherlands, two requirements must be met: the alleged infringement must be made sufficiently plausible (even the threat of infringement can be the basis of a PI in the Netherlands) and the claimant must have an urgent interest in the claimed relief.

The requirement of urgency is relatively easily met in the Netherlands because infringements of intellectual property rights are considered to be urgent by nature. If the PI judge is of the opinion that the claimant has waited too long with bringing a PI claim, they may reject the claim for lack of urgent interest. There is no rule for a trade mark holder to bring a PI claim within a specific timeframe, although the trade mark holder should act in a sufficiently expedient manner. If the aforementioned two requirements are met, the judge will normally grant the PI.

For the sake of completeness, on the basis of Article 50, paragraph 6 of the TRIPS Agreement, if a PI is granted, the PI proceedings must be timely followed up by proceedings on the merits (otherwise the losing party may request the lapse of the PI). 

The laws in the Benelux countries do not provide for enhanced damages for wilful infringement. The intention of the infringer is irrelevant.

The following remedies exist for the trade mark holder.

Article 2.21 – Compensation for Damages and Other Actions

Subject to the same conditions as in Article 2.20 (1), the exclusive right in a trade mark shall allow its holder to claim compensation for any prejudice which they have suffered following use within the meaning of that provision.

The court which sets the damages:

• shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the holder of the trade mark as a result of the infringement; or
• as an alternative to a), it may set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the trade mark.

Furthermore, the court may order, at the request of the holder of a trade mark and by way of compensation, that ownership of goods which infringe a trade mark right, as well as, in appropriate cases, the materials and implements principally used in the manufacture of those goods, be transferred to the holder of the trade mark; the court may order that the transfer shall only take place upon payment by the claimant of a sum to be determined by the court.

In addition to or instead of the action for compensation, the holder of a trade mark may institute proceedings for transfer of the profits made as a result of the infringement and for providing an accounting in this regard. The court shall reject the application if it considers that this use is not in bad faith or the circumstances of the case do not justify such an order.

The holder of a trade mark may institute proceedings for compensation or transfer of profits in the name of the licensee, without prejudice to the right granted to the licensee in Article 2.32 (4) and (5).

The holder of a trade mark may require reasonable compensation from a party which has carried out acts such as those mentioned in Article 2.20 during the period between the date of publication of the filing and the date of registration of the trade mark, insofar as the holder of the trade mark has acquired exclusive rights in this regard.

Article 2.22 – Additional Claims

Without prejudice to any damages due to the holder of a trade mark by reason of the infringement, and without compensation of any sort, the courts may order the recall from the channels of commerce, the definitive removal from the channels of commerce or the destruction of goods which infringe a trade mark right, as well as, in appropriate cases, materials and implements principally used in the manufacture of those goods. Those measures shall be carried out at the expense of the infringer, unless there particular reasons for not doing so. In considering a request as referred to in this paragraph, the proportionality between the seriousness of the infringement and the remedies ordered as well as the interests of third parties shall be taken into account.

The provisions of national law relating to steps to preserve rights and the enforcement of judgments and officially recorded acts shall apply.

Insofar as not provided for by national law and at the request of the holder of a trade mark, the courts may, under this provision, issue an interlocutory injunction against the alleged infringer or against an intermediary whose services are used by a third party to infringe a trade mark right, in order to:

• prevent any imminent infringement of a trade mark right;
• forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment, the continuation of the alleged infringements of a trade mark right; or
• make continuation of the alleged infringements subject to the lodging of guarantees intended to ensure the compensation of the holder of the trade mark.

At the request of the holder of a trade mark in proceedings concerning an infringement of their rights, the courts may order the party infringing the holder’s right to provide the holder with all information available concerning the origin and distribution networks of the goods and services which have infringed the trade mark and to provide him with all the data relating thereto, insofar as this measure seems justified and proportionate.

The order referred to in paragraph 4 may also be issued against anyone who is in possession of the infringing goods on a commercial scale, who has used the infringing services on a commercial scale or who has provided, on a commercial scale, services used in infringing activities.

The courts may, at the request of the holder of a trade mark, issue an injunction for the cessation of services against intermediaries whose services are used by a third party to infringe its trade mark right. The courts may also order, at the request of the claimant and at the expense of the infringer, that appropriate measures be taken to disseminate information concerning the decision.

See 9.2 Monetary Remedies.

On the basis of Article 1019h of the DCCP, all costs for legal assistance (including attorney’s fees) are "fully recoverable" in trade mark cases in the Netherlands, to the extent that these costs are reasonable and proportional. However, in practice, the cost awards are calculated and rendered in accordance with a table of so-called "indicative fees", which rarely provide for full compensation of the actual legal costs incurred by the winning party (see 8.10 Costs of Litigating Infringement Actions).

In specific and urgent cases, a trade mark owner can seek relief without advance notice to the defendant (ex parte).

See 9.4 Attorneys' Fees and Costs.

The Benelux legal system provides for customs seizure of counterfeits and parallel imports.

The relevant process differs depending on whether or not the procedure is started on request of the trade mark owner.

Ex officio action by Customs, includes the following.

• After the observation in the physical check, the IPR interrogator entering the data in ZGR (the online customs register) within two working days.
• After receipt of the information, Team IPR must find out the rightful claimant within one working day (and make other assessments such as calling in the FIOD and assessing the quality of the report).
• If, within one working day of receipt of the notification, no rightful claimant is traced for the purpose of submitting a request, the goods shall be released.
• If, within one working day after receipt of the notification, the rightful claimant is traced for the purpose of filing an application, the IPR team will take the notification of a decision to suspend the release or detention of the goods and send it to the rightholder, declarant or holder of the goods. The period of four working days for submission of the application starts with the notification (date) to the rightholder. The period will not be extended and the general ten working day period also starts with this notification.
• If no request is submitted within four working days, the goods will be released.
• The IPR Team shall take a decision within two working days of receipt of the request for allocation or rejection.
• If a request is rejected, the procedure stops and goods are released immediately.
• In the event of an application being granted, the normal procedure shall continue.

The ten working day period starts with the notification and continues. The holder of the decision (they now have a decision, so they are no longer called an entitled party) will have to meet the conditions within the ten working day period. Suspected infringing goods can be destroyed if Customs is notified in writing within ten working days of the date of the notification (Article 23). The response to Team IPR may be that the holder of the decision indicates that an IP right has been infringed and gives his consent to the destruction of the goods, or the declarant or holder of the goods:

• consents to the destruction of the goods; or
• does not respond within the time limit; or
• objects to the destruction.

The process involving customs seizures usually follows the following steps: 

• find and report to IPR Team;
• assessment IPR Team and notification Bureau of Fiscal Investigation and Prosecution;
• notification by IPR Team;
• providing information to right holder/sample/inspection;
• reactions from stakeholders;
• objection by the declarant or holder of the goods;
• end of the procedure/destruction; and
• monitoring compliance with obligations and sanctions.

There are no different types of remedies for different types of trade marks.

Civil Courts

In the Netherlands, the courts tend to encourage the parties to settle their disputes. How active a judge is in persuading parties to reach a settlement differs per judge.

There are no formal mechanisms. Usually, a settlement is reached through lawyer-assisted negotiations.

BOIP

The BOIP/BCIP provides for one formal mechanism; the two-month cooling-off period in the opposition procedure. This period cannot be by-passed. In this time, the parties may elect to use to try to reach an amicable settlement of their dispute.

ADR is not a common way to settle trade mark cases. Other than for domain name disputes, ADR proceedings are rarely used.

If the opponent or defendant in opposition proceedings notifies the BOIP that an application for a declaration of invalidity or revocation has been filed, the BOIP will normally suspend the opposition procedure.

Furthermore, in the event a revocation action is initiated against a European Community trade mark or an International trade mark registration with a designation of Benelux, prior to initiating an infringement procedure in the Netherlands, the infringement proceedings will be suspended until there is a decision which is no longer subject to appeal.

An appeal from a trial court decision can be taken to an appellate court within three months. An appeal from a trial court interim injunction in a preliminary proceeding can be taken to an appellate court within four weeks.

An appeal from a trial court decision normally takes approximately one to one and half year to be decided. An appeal from a trial court interim injunction in a preliminary proceeding normally takes approximately six to nine months to be decided.

There are a few special provisions concerning intellectual property procedures in general (Article 1019 of the DCCP).

There are no special provisions concerning the appellate procedure for trade mark disputes in particular.

The appeal implies a full review of the facts and the merits of the case.

A trade mark can be protected by copyright.

In principle, if a trade mark is a surname, a trade mark owner is not entitled to limit the use of the same surname by a third party insofar as this use qualifies as fair use. Whether specific use of a surname qualifies as fair use depends on the circumstances of the case. For example, it is not allowed to take unfair advantage of the trade mark.

The Benelux laws do not limit the scope of trade mark laws based on copyright or related rights, but simply allows cumulation of these rights.

It is conceivable and it sometimes happens that a trade mark is also protected by industrial design rights. Especially in the coming years, this may become more relevant in view of the fact that more and more different types of trade marks can be registered, see 1.2 Types of Trade Marks.

Since the BCIP acknowledges the possibility to register "a different type of trade mark" (without limitation), there is no exclusion which would be an impediment for the registration of any type of mark, as long as the trade mark is able to define sufficiently clearly and accurately what is claimed. Therefore, it is possible, for example, to register colour, pattern, position, motion or sound marks.

In the Benelux, there are no separate rules for the registration of personal names (celebrity names) as trade marks.

Depending on the name a trade mark registration of a celebrity’s name may be considered a registration in bad faith and a reason for the invalidation of the trade mark.

In the Netherlands, the articles with respect to unfair commercial practices (Article 6:193 et seq of the DCC) can also/in addition play a role in trade mark infringement discussions (depending on the circumstances of the case). For example, when trade marks are being used in marketing/advertising with respect to products which are not produced and traded by (via) the respective trade mark owners.

The same applies to the "regular" unlawful act article (Article 6:162 of the DCC).

It should be noted that, in light of Brexit, UK representatives can no longer act as attorneys before the BOIP. This is the case since a trade mark holder must indicate a correspondence address or representative within the EEA in order to be able to carry out acts and submit applications.

Benelux trade mark law is already applied in the online world for more than two decades and there are no special rules which apply to trade marks that are used on the internet.

The Benelux has no special rules or norms regarding trade marks as used in business.