Opposition proceedings in the Benelux

Opposition procedure

The minimum requirements to initiate an opposition procedure in the Benelux are:

• Timely filing of a completed opposition form (by fax or mail) by a company or natural person established within the EU, and for all others with the help of a local representative;

• Payment of the opposition fee (a minimum of 40 percent, therefore €400 of the total sum payable, before filing the opposition—the remainder is paid after the ‘cooling off ’ period); and

• In general, compliance with Rule 1.18 of the implementing regulations—non-compliance cannot be remedied.

The term for filing an opposition is the same for national and international (Madrid) applications designating the Benelux, namely two months from the month of publication of an application in the Benelux Trademark Journal (for a national application), or in the World Intellectual Property Organization (WIPO) Gazette (for an international application), ie, if the mark was published on February 14, the deadline for filing an opposition is May 1.

This is going to change in the near future to three months from the date of publication. The Benelux Office for Intellectual Property (BOIP) will examine the fi led forms and verify that payment has been made.

If all is in order, the office will notify parties that the opposition is admissible and sets the terms for:

• Commencement of the adversarial period within two months of the notification, provided the remainder of the opposition fee has been paid within that term; and

• Substantiation of grounds and arguments, including evidence by the opponent, within two months of the start of the adversarial period.

It is important to note that the only Rule 1.18 requirement that can be remedied is the language choice. If no choice is indicated, BOIP will notify parties that the language of the proceedings will be that of the applicant/defendant. Grounds for opposition Opposition can be based on the following grounds:

• Identical trademarks and identical goods or services;

• Identical or similar trademarks and similar goods or services, where there exists a likelihood of confusion; and/or

• The newer trademark can cause confusion with a well-known trademark within the meaning of Article 6b of the Paris Convention.

This excludes, among other things, the following rights owners/ situations:

• Earlier trade names;

• Earlier copyright;

• Earlier geographical indication for wines and spirits;

• Earlier design right (eg, for a typeface or logo);

• Earlier non-registered trademark or sign which is used in the course of trade of more than mere local importance;

• Earlier non-registered trademark (Benelux) against an application that was filed by a representative or agent of the owner in the name of the agent without permission from the owner;

• Earlier non-registered trademark that is well known against an application for non-similar goods or services (this is probably going to change, see below).

This is an area where Benelux Law deviates from EU law in a significant way (with regards to the last three grounds).

The language regime

The Benelux languages are Dutch, French, Luxembourgish and German. Dutch and French are the main languages and a system for the choice of language in oppositions was required. As a general rule, proceedings are conducted in the language of the (trademark) applicant.

The opponent can request proceedings to be conducted in French or English, but the applicant has to agree explicitly. If the applicant does not agree with French or English, all arguments filed in French will be translated by the BOIP (at a cost to the opponent).

If the choice of both parties is English the proceedings may be conducted by the parties in English, but BOIP will communicate with both parties in one of the official languages (French or Dutch) and the decision will not be written in English.

Challenges for the Benelux applicant faced with an opposition

The applicant—who in many cases is not equipped with knowledge of the trademark law, especially since representation is not required and is often not used—is faced with the following challenges:

• If he does not respond in any way (see below), the application is automatically lost; and

• If he does respond and loses, he may end up having to pay €1000 to the opponent (note: only if the opponent has successfully challenged the complete application).

An applicant for an international application (in fact a registration, but with post-registration refusal or oppositions) is faced with a few extra challenges:

• BOIP notifies WIPO, which in turn notifies the applicant, of an opposition filed against his application, but this notification usually arrives close or even after the deadline to choose the language of the proceedings (one month after the BOIP notification), since WIPO takes some time to process the BOIP notification and then sends this notice by regular mail; and

• Finding a reliable agent in the Benelux to handle the opposition. The trouble with the present system First, the Benelux system is not harmonised with the EU system on the grounds for opposition; EU grounds for opposition are much wider.

In practice this could lead to situations where a Community trademark (CTM) can be successfully opposed on grounds of a Dutch trade name, but the same trade name owner has no legal standing to oppose an identical trademark application in the Benelux.

To give another example, a company such as Apple would not be able to successfully oppose an application for dissimilar goods or services in the Benelux, even if someone tried to register the Apple logo for, say, kitchen cutlery.

This is linked to the fact that an opposition based on a well-known trademark (such as Apple) still requires a risk of confusion, and according to Benelux practice (Formula I opposition decision of February 27, 2009) the absence of similarity of goods or services pre-empts a risk of confusion.

This anomaly does not leave a good impression. It is true that there is also invalidity or revocation actions, with wider grounds, but they carry a high price as well: expensive court proceedings.

Again, EU law differs in this respect: invalidity actions are handled by the Office for Harmonisation in the Internal Market (OHIM). One further interesting aspect about the Benelux procedure is the proof of use rule.

The BOIP notifies all applicants faced with an opposition that they can request proof of use of the mark by the opponent. This suggests that if the opponent cannot show such use, the applicant has the option to have the registration annulled.

This is not the case, however, since these proceedings are dealt with by the courts.Second, the fees charged by the BOIP (€1000) are, in my view, just too high, especially when considering the following:

• OHIM charges a €350 opposition fee, and any damages awarded are limited to €350 in first instance and €650 on appeal, but only if the case is completely successful for the opponent;

• An applicant that does not respond at all to the notice of opposition and/or arguments filed—this applies to many owners of international registrations designating the Benelux— automatically loses his entire application (in contrast, OHIM always decides upon the merits of the case, even if the applicant does not file any arguments or responses at all), because it is assumed that he has voluntarily relinquished his rights and the application is struck from the register. So the choice is either lose the entire application or risk having to pay €1000 (not counting any fees charged by agents); and

• In general, many applicants are small companies that do not even use agents to file their applications.

It is rather unfair to charge these companies such considerable amounts, whether they are the applicant faced with an opposition or when they want to file oppositions themselves. The fees and consequently the awarded damages are a strong deterrent for the smaller pocket and will be used as a tool to exert pressure on the other party, which is not the case in EU oppositions.

Third, something must be done about the extra work, delays and confusion caused by the present language system and especially the disadvantage to the applicant of an international registration. The applicant is often faced with a fait accompli because the notification of the incoming opposition reaches him too late.

From my own practice I mention here an opposition from a very large company located in Belgium—the Francophone part—where we had to wait seven months for the translation of their arguments by BOIP.

In the meantime there is insecurity for the applicant and rising costs (note that an option is to tell the BOIP you do not require a translation). I don’t want to criticise the BOIP—it does an excellent job—but the language system is a problem.

Suggestions for change

• Harmonise the grounds for opposition with the EU system (with some exceptions). A current proposed extension to grounds for opposition is limited to well-known trademarks (as opposed to trademarks with a reputation, which is not the same).

• BOIP decides on the merits of the case, even when the applicant does nothing, as with CTM oppositions. This does more justice to the (smaller) applicant. Always require an explicit withdrawal.

• Introduce invalidity actions before the BOIP, making it possible to stay opposition proceedings while dealing with the invalidity action, all in the same forum (I fail to see why the BOIP would not be equipped to handle this whereas OHIM has no problem with invalidating Community-wide registrations covering 27 states).

The proof of use requirement may offer some solace but not in cases where, eg, the attacking mark lacks distinctiveness (the Benelux register is still quite ‘dirty’ due to older registrations from the pre-examination age, when distinctiveness was not examined).

• Lower the opposition fee to a one-time €350 which also saves time for the overburdened BOIP, since they do not have to monitor the payment of second instalments. The number of oppositions would probably also automatically rise.

When comparing the funds generated from oppositions, BOIP should take into account that about 85 percent of all cases never reach a decision. This also means that for oppositions that do not reach the adversarial phase, BOIP does not collect the second instalment of €650.

• Don’t allow the opponent to choose the language. Make them file the opposition in the language of the applicant, with translation to be done in-house (if the fee is lowered to €350 then it will be not too burdensome to pay additional translation costs).

• For international registrations the standard language should be English, unless the applicant specifically requests French. BOIP has had plans since 2009 to introduce English as an official ‘working language’ for the opposition procedure as of 2013. We await developments on this.

• Under Benelux law it is possible to request an expedited registration. In such a case the mark is almost instantly entered into the register, but still has to go through the examination on absolute grounds and an opposition period.

The somewhat awkward situation can occur in which an opposition is launched against a ‘registration’ that could still be refused on absolute grounds. A post-grant opposition in a pre-grant opposition world. This sounds to me like a waste of resources. The registration should also be examined on absolute grounds within the same short period.