Without prejudice to the provisions of ordinary law, a surname may serve as a trade mark.

Transcription

1 BENELUX RULES ON TRADE MARKS UNIFORM BENELUX TRADE MARKS ACT (BENELUX TRADE MARKS ACT) PART I. INDIVIDUAL TRADE MARKS Section 1 Individual trade marks may consist of names, designs, stamps, seals, letters, numerals, the shape of goods or of their packaging and all other signs capable of being represented graphically which are used to distinguish the goods of one undertaking from those of other undertakings. However, signs which consist exclusively of the shape which results from the nature of the goods themselves, or the shape which gives substantial value to the goods or the shape of goods which is necessary to obtain a technical result, will not be regarded as trade marks. Section 2 Without prejudice to the provisions of ordinary law, a surname may serve as a trade mark. Section 3 1. Without prejudice to the rights of priority provided for by the Paris Convention for the Protection of Industrial Property or the Madrid Agreement Concerning the International Registration of Marks or the rights of priority which result from the Agreement establishing the World Trade Organization, the exclusive right in a trade mark will be acquired by registration of the mark which has been applied for in the Benelux Territory (Benelux application) or which results from registration with the International Bureau for the Protection of Industrial Property (international application). 2. In determining the order of priority for applications, account will be taken of rights, existing on the date of the application and maintained at the time of the litigation, in: a. identical trade marks filed for identical goods; b. identical or similar trade marks filed for identical or similar goods, if because of the possible association with the earlier trade mark there exists a likelihood of confusion on the part of the public. c. similar trade marks filed for goods that are not similar, which enjoy a reputation in the Benelux Territory, where the use without due cause of the later trade mark would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier trade mark. Section 4 Subject to the limitations in sections 6bis, 6ter 6quater, 6sexies, 6septies and 14, no right in a trade mark will be acquired by: 1. the registration of a trade mark that, regardless of the use made thereof, is contrary to public policy or to accepted principles of morality of one of the Benelux countries, or that is to be refused or invalidated pursuant to Article 6ter of the Paris Convention;

2 2. the registration of a trade mark that is liable to mislead the public, for instance as to the nature, quality or geographical origin of the goods; 3. the registration of a trade mark that is similar to a collective mark that has been registered for similar goods which benefited from a right that lapsed during the three years preceding the application; 4. the registration of a trade mark that is similar to an individual trade mark applied for by a third party for similar goods, which benefited from a right that lapsed during the two years preceding the application as a result of the expiry of the registration, unless the third party consents to this or has not put this trade mark to use in accordance with section 5 (2) (a); 5. the registration of a trade mark which may give rise to confusion with a well-known trade mark within the meaning of Article 6bis of the Paris Convention, which belongs to a non-consenting third party; 6. the registration of a trade mark which was applied for in bad faith, including: a. an application in the knowledge of or in inexcusable ignorance of genuine use in good faith of a similar trade mark for similar goods by a non-consenting third party on Benelux Territory during the last three years; b. an application filed in the knowledge, resulting from a direct relationship with a third party, of the genuine use in good faith of a similar trade mark for similar goods by a third party outside the Benelux Territory during the last three years, unless the third party consents or the said knowledge was acquired only after the applicant had started to use the trade mark in the Benelux Territory; 7. the registration of trade marks for wines containing geographical indications for the naming of wines or which consist of such indications, or the registration of trade marks for spirits containing geographical indications for the naming of spirits or which consist of such indications, relating to wines or spirits that do not have such origins, unless the application that resulted in this registration was filed in good faith before: a. the provision in question entered into force; or b. the geographical indication in question is protected in the country of origin or the Community. Section 5 1. The right to a trade mark lapses: a. through voluntary cancellation or the expiry of the registration of the trade mark; b. through the cancellation or the expiry of the international registration or through surrender of the protection for the Benelux Territory or, in accordance with the provisions of Article 6 of the Madrid Agreement, as a result of the fact that the trade mark no longer enjoys legal protection in the country of origin. 2. The right to a trade mark will be declared to have been revoked, subject to the limitations in section 14 (C), provided that, after the date of the registration:

3 a. the trade mark has not been put to genuine use in the Benelux in connection with the goods in respect of which it is registered for an uninterrupted period of five years, and there are no proper reasons for non-use; in the event of proceedings, the courts may place all or part of the burden of proof on the proprietor of the trade mark; b. in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a good in respect of which it was registered; c. in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods. 3. The following will also constitute use within the meaning of subsection (2) (a) above: a. use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered; b. affixing of the trade mark to goods or to the packaging thereof, solely for export purposes; c. use of the trade mark by a third party with the consent of the proprietor. Section 6 A.1. Trade marks are applied for within the Benelux either with the national authorities or with the Benelux Office for Intellectual Property in the manner specified by the Implementing Regulations and against payment of the fees due. It will be examined whether the documents filed meet the requirements for establishing a date of application, and the date of application will be determined. The applicant will be informed, without delay and in writing, of the date of application or, where applicable, the grounds for rejection. 2. If the other provisions of the Implementing Regulations are not satisfied at the time of application, the applicant will be informed of this without delay and in writing, with the regulations which have not been fulfilled being listed, and he will be given the opportunity to respond to this within a period set by the Implementing Regulations. 3. The application will lapse if the provisions of the Implementing Regulations are not satisfied within the period prescribed. 4. If an application is filed with a national authority, it will forward that Benelux application to the Benelux Office for Intellectual Property either immediately after receiving the application or after it has been established that the application satisfies the specified requirements. 5. In accordance with the provisions of the Implementing Regulations, the Benelux Office will publish the application after the requirements for establishing an application date have been satisfied and the goods indicated have been classified in accordance with the Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. B. The Benelux Office for Intellectual Property will carry out a search for previous registrations in respect of the application in accordance with the provisions of the Implementing Regulations, unless the applicant can submit evidence that a search for previous registrations has been requested or

4 carried out within three months before the application. In the latter case an amount determined in accordance with the Implementing Regulations will be deducted from the fee referred to in subsection A (1). C. Without prejudice to the application of sections 6bis, 6quater and 6sexies, the trade mark applied for in respect of the goods listed by the applicant will be registered if the applicant, after receiving the results of the search referred to at B and within a time limit determined by the Implementing Regulations, has made it known that he wishes to proceed with his application. Proof of registration will be issued to the proprietor of the trade mark. D. The right of priority arising under Article 4 of the Paris Convention or the Agreement Establishing the World Trade Organization will be claimed at the time that the application is filed or by means of a special declaration submitted to the Benelux Office in the month following application in the manner laid down by the Implementing Regulations and against payment of the fees due. If no such claim is made, the right of priority will lapse. E. If all the requirements referred to in this section have been satisfied, the applicant may, in accordance with the provisions of the Implementing Regulations, request that the Benelux Office register the application immediately. Sections 6bis, 6ter, 6quater, 6sexies and 6septies apply to trade marks thus registered, on the understanding that the Benelux Office for Intellectual Property is authorized to decide to cancel the registration and the trade mark proprietor may lodge an appeal for the registration to be upheld. Section 6bis 1. The Benelux Office will refuse to register the trade mark if it considers that: a. the sign cannot constitute a trade mark within the meaning of section 1; b. the trade mark is devoid of any distinctive character; c. the trade mark consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production or other characteristics of the goods; d. the trade mark consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; e. the trade mark filed relates to a trade mark as referred to in section 4 (1), (2) or (7). 2. Refusal to register will apply to the entire sign constituting the trade mark. It may be restricted to one or more of the goods for which the trade mark is intended. 3. The Benelux Office will inform the applicant in writing of its intention to refuse registration in whole or in part, will state the grounds and will provide the applicant with the opportunity to respond within a period laid down by the Implementing Regulations. 4. If the Benelux Office's objections to registration have not been lifted within the period laid down, registration of the application will be refused in whole or in part. The Benelux Office will inform the applicant in writing without delay, indicating the grounds for refusal, and advising of the remedy against that decision, referred to in section 6ter. Refusal only becomes final when the decision is no

5 longer subject to appeal or, if appropriate, the decision of the appeal authority is no longer subject to appeal in cassation. Section 6ter 1. Within two months following the communication referred to in section 6bis (4), the applicant may lodge a petition with the Court of Appeal in Brussels, the Court of Appeal in The Hague or the Court of Appeal of Luxembourg with a view to obtaining an order for registration of the trade mark. 2. In the context of these proceedings, the Benelux Office for Intellectual Property may be represented by the director or by a member of staff authorized by him. 3. The appeal court having territorial jurisdiction is determined by the address of the applicant, the address of the agent or the postal address given at the time of filing the application. If neither the applicant nor the agent has an address or postal address in the Benelux territory, the court having jurisdiction will be the one selected by the applicant. 4. The ruling of the appeal court is open to referral to a court of cassation, and it will have suspensive effect. Section 6quater 1. The applicant or the proprietor of an earlier trade mark may give notice of opposition, in writing, to the Benelux Office, within a period of two months from the first day of the month following publication of the application, against a trade mark which: - in the order of priority, ranks after his own in accordance with section 3(2)(a) and (b), or - may give rise to confusion with his well-known trade mark within the meaning of Article 6bis of the Paris Convention. 2. A licensee will have the same right if authorized by the proprietor of the trade mark; 3. The opposition may be based on one or more, earlier, trade marks; 4. Notice of opposition is deemed not to have been filed until the fees due under the Implementing Regulations have been paid. Section 6quinquies A. Subject to the provisions of subsection B, no person is compelled to be represented before the Office. B. Without prejudice to the second sentence of subsection C, natural and legal persons not having either their domicile or their principal place of business or their real and effective industrial or commercial establishment in the European Community or in the European Economic Area must be represented in the opposition proceedings initiated by an agent pursuant to sections 6quater and 6sexies. C. Natural and legal persons having their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Community or in the European

6 Economic Area may be represented in opposition proceedings by an employee, who must file a signed authorization with the Office, the form of which must be in accordance with the provisions of the Implementing Regulations. An employee of a legal person to which this subsection applies may also represent other legal persons which have economic connections with the first legal person, even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial establishment in the European Community or in the European Economic Area. D. Representation of natural or legal persons before the Office may be undertaken by; - a representative in trade mark matters entered in the register of the Benelux Office; - a legal practitioner registered with the bar of a court or with the bar association or on a list of trainees of a bar located within the Benelux territory or a legal practitioner qualified in one of the Member States of the European Union or European Economic Area and having his place of business within the European Union or European Economic Area, to the extent that he is entitled to act as a representative in opposition proceedings in that Member State; - a person who is entitled to act in opposition proceedings before the Office of the Member State of the European Union or European Economic Area where he has his place of business or his seat and who is entitled to act in the Benelux territory within the scope of the freedom of services within the European Union or European Economic Area. Section 6sexies A. The Office will deal with the opposition within an appropriate period in accordance with the provisions laid down in the Implementing Regulations and with due regard to the principle that both sides should be heard. B. The opposition proceedings will be suspended: - where the opposition is based on the application of a trade mark; - if a claim for revocation or for invalidity has been filed; - in the course of proceedings for refusal on absolute grounds; - at the joint request of the parties. C. The opposition proceedings will be terminated: - if the opponent has lost the capacity to act or has failed to submit documents within the period fixed showing that the right to his trade mark cannot be declared to be revoked under section 5(2)(a); - if the defendant does not react to the opposition that has been filed. In this case he is deemed to have surrendered his rights to the application; - if there is no longer a basis for the opposition either because it has been withdrawn or because the application against which the opposition is filed has lapsed; - if the earlier trade mark is no longer valid.

7 In these cases part of the fees paid will be returned. D. After examination of the opposition has been completed, the Office will reach a decision as soon as possible. If the opposition is considered well-founded, the Office will refuse to register the trade mark in whole or in part. Otherwise, the opposition will be rejected. The Office's decision only becomes final when the decision is no longer subject to appeal or, if appropriate, the decision of the appeal authority is no longer subject to referral to a court of cassation. E. The adversely affected party must bear the costs. The costs are fixed in accordance with the provisions of the Implementing Regulations. The costs are not due if the opposition is partly successful. The Office's decision fixing the amount of costs is enforceable; enforcement is governed by the provisions in force in the State in the territory of which it is carried out. Section 6septies 1. Within two months after judgment has been given in the opposition proceedings in accordance with Article 6sexies, subsection D, the parties may lodge a petition with the Court of Appeal in Brussels, the Court of Appeal in The Hague or the Court of Appeal of Luxembourg with a view to obtaining an order for annulment of the Office's decision. 2. The appeal court having territorial jurisdiction is determined by the address of the defendant, the address of his agent or the postal address given at the time of filing the application. If none of these addresses are in the Benelux territory, the court having territorial jurisdiction is determined by the address of the opponent or his agent. If neither the opponent nor his agent has an address or postal address in the Benelux territory, the court having jurisdiction will be the one selected by the party lodging the appeal. 3. The ruling of the appeal court is open to referral to a court of cassation, and it will have suspensive effect. Section 7 A. International applications are registered in accordance with the provisions of the Madrid Agreement and the Protocol relating to the Madrid Agreement of 27 June The national rights referred to in Article 8 (1) of the Madrid Agreement and the Madrid Protocol, as well as the rights referred to in Article 8 (7) (a) of the Madrid Protocol, will be laid down in the Implementing Regulations. B. International applications are subject to an ex officio priority search. Section 8 1. The Benelux Office will register international applications in respect of which an application has been made for the extension of protection to the Benelux territory. Section 6bis (1) and (2) and Section 8bis apply mutatis mutandis. 2. The Benelux Office will inform the International Bureau in writing without delay of its intention to refuse registration, indicating the grounds therefor by means of a notice of the total or partial provisional refusal of protection for the trade mark and will give the applicant the opportunity to respond to this

8 in accordance with the provisions in the Implementing Regulations. Section 6bis (4) applies mutatis mutandis. 3. Article 6ter applies mutatis mutandis, on the understanding that the appeal court having territorial jurisdiction will be determined by the agent s address or the postal address. If neither address is located in the Benelux Territory, then the court chosen by the applicant will have jurisdiction. 4. The Benelux Office will inform the International Bureau, without delay and in writing, about decisions from which no further appeal lies and will indicate the grounds therefor. 5. In accordance with the provisions of the Implementing Regulations, the applicant may request that Benelux Office registers the application immediately. Articles 6bis, 6ter, 6quater, 6sexies and 6septies apply to trade marks thus registered, on the understanding that the Benelux Office for Intellectual Property may decide to cancel the registration and the trade mark proprietor may lodge an appeal for the registration to be upheld. Section 8bis 1. Within a period of two months, with effect from the first day of the month following publication by the International Bureau, opposition may be filed with the Benelux Office against an international application for which protection extending to the Benelux Territory has been requested. Sections 6quater and 6sexies apply mutatis mutandis. 2. The Benelux Office will inform the International Bureau, without delay and in writing, of the opposition submitted, with reference to the provisions of sections 6quater to 6septies as well as to the relevant provisions of the Implementing Regulations. 3.The Benelux Office will inform the International Bureau, without delay and in writing, about a decision from which no further appeal lies and will indicate the grounds therefor. Section 9 The Benelux Office will, at the request of the applicants or of third parties and against payment of a fee, carry out a priority search in the Benelux Register. The Benelux Office will moreover carry out the priority search as referred to in section 6 (B) and section 7 (B) in the Benelux Register. It will notify the applicant about the outcome of the search without stating reasons or conclusions. With a view to the search, the Benelux Office will adopt a classification for the registration of trade marks in accordance with a system laid down by the Benelux Office. Section 10 Registration of a trade mark which has been applied for in the Benelux Territory (Benelux application) will be valid for a period of 10 years with effect from the date of application. The sign constituting the trade mark may not be modified during the period of

9 registration, nor at the time of its renewal. Registration will be renewed on request for further periods of 10 years in the manner specified by the Implementing Regulations and against payment of the fees due. Renewals will be requested and the fees paid during the six months prior to the expiry of the registration. Renewals may still be requested within six months following the expiry date of the registration, subject to the simultaneous payment of an additional fee as laid down by the Implementing Regulations. Renewals take effect from the date of expiry of the registration. Six months prior to the expiry of a registration, the Benelux Office will issue a written reminder of the expiry date to the proprietor of the trade mark. Such reminders will be sent to the last address of the proprietor of the trade mark known to the Benelux Office. Failure to send or receive such notices will not constitute dispensation for failing to renew a registration within the time limits provided. This may not be relied upon in court proceedings or against the Office. The Office will register renewals. Section 11 A. Independently of the transfer of all or part of a business, a trade mark may be transferred or be the subject of a licence in respect of all or some of the goods for which the trade mark was applied for or registered. The following will be invalid: 1. assignments between living persons not laid down in writing; 2. assignments or other transfers not made for the whole of the Benelux territory. B. The proprietor of a trade mark may invoke the exclusive right to the trade mark against a licensee who contravenes the provisions of the licensing contract in respect of its term, the form covered by the registration in which the trade mark may be used, the goods for which the licence has been granted, the territory in which the trade mark may be affixed or the quality of the goods marketed by the licensee. C. The assignment or other transfer or the licence will only have effects vis-à-vis third parties after the filing of an extract of the document demonstrating this transfer or licence, or of a corresponding declaration signed by the parties involved, has been registered, provided that such extract or document was filed according to the formal requirements and against payment of the fees due, as laid down in the Implementing Regulations. The provision in the preceding sentence applies mutatis mutandis to rights of pledge and attachments. D. In order to obtain compensation for a loss directly incurred, or to be allocated a proportion of the profit made by a defendant, a licensee will have the right to intervene in an action as referred to in section 13 (A) (4) and (5), brought by the proprietor of the trade mark.

10 The licensee may initiate an independent action as referred to in the previous sentence only after he has obtained authorization from the proprietor of the trade mark for that purpose. Section 12 A.1. With the exception of the proprietor of a well-known trade mark within the meaning of Article 6bis of the Paris Convention, and regardless of the nature of the action brought, no one may claim protection in court for a sign deemed to be a trade mark within the meaning of section 1 unless that claimant can claim registration of the trade mark he has applied for. 2. In such a case, the court will declare it inadmissible ex officio. 3. This inadmissibility will be cancelled by registration of the trade mark or renewal during the course of the proceedings. 4. A trade mark proprietor may claim reasonable compensation from a person who, in the period between the date of publication of the application and the date of registration of the trade mark, has performed the acts referred to in section 13 (A) below, provided that the trade mark proprietor has acquired exclusive rights to do so. B. The provisions of this Act will not in any way affect the right of the users of a sign which is not regarded as a trade mark within the meaning of section 1, to invoke ordinary law insofar as this allows opposition to be raised to unlawful use of that sign. Section 13 A.1. A registered trade mark confers on its proprietor an exclusive right therein. Without prejudice to the possible application of ordinary law in matters of civil liability, the exclusive right to a trade mark entitles the proprietor to prohibit all third parties from using a sign without his consent: a. if that sign is identical to the trade mark and is used in the course of trade for goods which are identical to those for which the trade mark is registered; b. if, because that sign is identical or similar to the trade mark and is used in the course of trade for the same or similar goods, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark; c. if that sign is identical or similar to the trade mark and is used in the course of trade for goods which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Benelux Territory and 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; d. if that sign is used for purposes other than those of distinguishing goods, 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. 2. For the purposes of applying paragraph 1, use of a trade mark or similar sign means in particular:

11 a. affixing the sign to the goods or to the packaging thereof; b. offering the goods, putting them on the market or stocking the goods for these purposes under that sign; c. importing or exporting the goods under that sign; d. using the sign on business papers and in advertising. 3. Repealed. 4. Subject to the same conditions as in section 13 (1), the proprietor of the trade mark may claim compensation for any damage which he may have been suffered as a result of the use within the meaning of that provision. 5. In addition to or instead of the action for compensation, the proprietor of a trade mark may institute proceedings for transfer of the profit made as a result of such use and for that to be accounted for; the court will 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. 6. The proprietor of a trade mark may institute proceedings for compensation or transfer of profit on behalf of the licensee, without prejudice to the right granted to the licensee in section 11 (D). 7. The exclusive right does not include the right to oppose the use by a third party in the course of trade of: a. his own name and address; b. indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods, or other characteristics of the goods; c. the trade mark, where it is necessary in order to indicate the intended purpose of a product, in particular as accessories or spare parts; provided that such use is made in accordance with honest practices in industrial or commercial matters. 8. The exclusive right to a trade mark does not include the right to oppose the use in the course of trade of a similar sign which draws its protection from an earlier right which only applies to a particular locality, if such right is recognized by the legal provisions of any Benelux country. 9. The exclusive right does not include the right to oppose the use of the trade mark for goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent, unless there are legitimate reasons for the proprietor to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market. B. The administrative classification adopted for the registration of trade marks does not constitute a criterion for evaluating the similarity of goods.

12 C. The exclusive right in a trade mark drafted in one of the national or regional languages of the Benelux Territory will extend to translations into another of these languages ipso jure. Evaluation of the similarity arising from translations into one or more languages that are foreign to the aforesaid territory, will be a matter for the courts. Section 13bis 1. The proprietor of a trade mark may claim ownership of movable goods which have infringed his right or assets which have been used for the production of these goods or to require that they be destroyed or rendered unserviceable. Such a claim may be made in respect of sums of money which are presumed to have been collected as a result of infringement of the trade mark right. Claims will be rejected if the infringement was not made in bad faith. 2. The provisions of national law relating to steps to preserve rights and to the enforcement of judgments and officially recorded documents apply. 3. The courts may order that authority for enforcement will be given only on payment by the claimant of a sum which they will fix. 4. A licensee may exercise the powers referred to in subsection (1) above provided that these are in order to protect the rights which it has been permitted to exercise and provided that it has obtained permission from the proprietor of the trade mark for that purpose. 5. At the request of the proprietor of a trade mark, the courts may order the party infringing the proprietor s right to provide the proprietor with all information available concerning the origin of the goods which have infringed the trade mark and to provide him with all the data relating thereto. Section 14 A. Any interested party, including the Public Prosecutor, may claim the invalidity of: 1. a. the registration of a sign that cannot constitute a trade mark within the meaning of section 1; b. the registration of a trade mark that lacks distinctive character; c. the registration of a trade mark that consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or other characteristics of the goods; d. the registration of a trade mark which consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; e. the registration of a trade mark for which, pursuant to section 4 (1), (2) and (7), no trade mark right is acquired. 2. a registration of a trade mark for which, pursuant to section 4 (3), no trade mark right is acquired provided that invalidity is claimed within a period of five years from the date of the application. When proceedings for a declaration of invalidity are brought by the Public Prosecutor, only the courts of Brussels, The Hague and Luxembourg will have jurisdiction in the cases mentioned above.

13 Such proceedings brought by the Public Prosecutor will stay any other proceedings brought on the same grounds. B. Provided that the proprietor of the prior registration or the third party referred to in section 4 (4), (5) and (6) is a party to the proceedings, any interested party may claim the invalidity of: 1. the registration a trade mark whose application ranks after that of a similar trade mark in the circumstances provided by section 3 (2); 2. the registration of a trade mark for which, pursuant to section 4 (4), (5) and (6), no trade mark right is acquired; invalidity under section 4 (4) must be claimed within a period of three years from the expiry of the prior registration; invalidity under section 4 (5) and (6) must be claimed within a period of five years from the date of application. This period of five years does not apply to registrations of trade marks, as referred to in the section 4 (5), which have been applied for in bad faith. C.1. Any interested party may claim that a trade mark right has lapsed in the cases provided for by section 5 (2). A trade mark right may not be claimed to have lapsed on the basis of section 5 (2) (a) if, during the interval between the expiry of the five-year period and the filing of the application for revocation, use of the trade mark has been started or resumed. The commencement or resumption of use within a period of three months prior to the filing of the application for revocation will, however, be disregarded where preparations for the commencement of use or resumed use occur only after the proprietor has become aware that the application for revocation may be filed; 2. The proprietor of a trade mark right which can no longer be claimed to have lapsed under subsection (1) above may not, on the basis of the provisions of subsection (B), claim invalidity of the registration of a trade mark which has been applied for during the period in which the earlier trade mark right could have been declared to be revoked under section 5 (2) (a), nor oppose the use of the trade mark thus applied for, under section 13 (A) (1) (a), (b) or (c). D. Only the courts will have jurisdiction to rule upon proceedings based on this Act; the court will ex officio cancel the registration of invalid or revoked registrations. Section 14bis 1. The proprietor of an earlier trade mark right who has acquiesced, for a period of five successive years, in the use of a trade mark that was registered later, while being aware of such use, will no longer be entitled on the basis of his earlier right either to apply for a declaration that the later trade mark is invalid under section 14 (B) (1) or to oppose the use of the later trade mark under section 13 (A) (1) (a), (b) and (c) in respect of the goods for which the trade mark has been used, unless the later trade mark was filed in bad faith. 2. Acquiescence in the use of a later trade mark as defined in subsection (1) above will not give the proprietor of the later trade mark the right to oppose the use of the earlier trade mark. Section 14ter A court may rule that a registered trade mark has acquired distinctive character through use. Section 15

14 A. The proprietor of the registration of a Benelux trade mark may request cancellation of its registration at any time. However, if a licence has been registered, registration of the trade mark may be cancelled only at the joint request of the proprietor of the trade mark and the licensee. The provisions of the preceding sentence regarding cancellation of the registration of the trade mark apply mutatis mutandis where a right of pledge or attachment has been recorded. B. Cancellation will have effect throughout the Benelux territory. C. Surrender of the protection resulting from an international application, which is restricted to part of the Benelux Territory, will have effect for the whole of the territory, notwithstanding any statement to the contrary by the proprietor. Section 16 The invalidation of a registration, the revocation of a right to a trade mark or the voluntary cancellation of a registration will apply to the entire sign constituting the trade mark. The invalidation or revocation of a right will be limited to one or more of the goods in respect of which the trade mark is registered, if the grounds for invalidation or revocation affect only some of the goods. Voluntary cancellation can be limited to one or more of the goods in respect of which the trade mark is registered. Section 17 A. In addition to the responsibilities entrusted to it in the preceding sections, the Benelux Office is responsible for: 1. amending registrations, either at the request of the proprietor or on the basis of notifications from the International Bureau for the Protection of Industrial Property or on the basis of court orders, and, where required, informing the International Bureau of this; 2. publishing a monthly journal in Dutch and in French containing the registrations of the Benelux trade marks and all other information prescribed by the Implementing Regulations; 3. issuing copies of registrations at the request of any interested party upon request, communicating information to anyone from the register of representatives in trade mark matters as well as information about the regulations issued by or pursuant to this Act regarding the registration of representatives in trade mark matters. B. Implementing Regulations will determine the charges to be collected for the services referred to in subsection (A) above as well as the prices of the monthly journal and of the copies. C. The information referred to in subsection A (2) may also be issued electronically. Section 18 1 Not yet entered into force. See also Article VIII, second sentence, of the protocol of 11 December 2001.

15 Pursuant to this Act, nationals of Benelux countries as well as nationals of countries not forming part of the Union established by the Paris Convention who are resident in the Benelux Territory or who have a real and effective industrial or commercial establishment there can, for this entire territory, rely for their own benefit upon the application of the provisions of the Paris Convention and the Madrid Agreement. PART II. COLLECTIVE MARKS Section 19 All signs which are described as such at the time of the application and which are used to distinguish one or more common characteristics of goods originating from different companies using the trade mark under the control of the proprietor will be regarded as collective marks. The latter may not use the trade mark for goods originating from his company or from a company in whose management or supervision he is directly or indirectly involved. Any signs which are described as such at the time of the application and are used to designate the geographical origin of goods in the course of trade will also be regarded as collective marks. Such trade marks do not entitle the proprietor to oppose the use of his mark by a third party in the course of trade in accordance with honest practices in industrial or commercial matters; in particular, such a trade mark may not be relied upon against a third party who is entitled to use the geographical name in question. Section 20 Unless provided otherwise, individual and collective marks are subject to the same rules. Section 21 An exclusive right to a collective mark will be acquired only if regulations governing its use and control thereof accompany the application for the trade mark. However, in the case of an international application, the applicant will have a period of six months following notification of the international registration provided for by Article 3 (4) of the Madrid Agreement and Madrid Protocol to file those regulations. Section 22 The regulations governing the use and control of a collective mark must indicate the common characteristics of the goods which the mark is intended to guarantee. They will also specify the manner in which proper and efficient control of those characteristics will be exercised, together with appropriate sanctions. Section 23 Section 4 (3) will not apply to the application for a collective mark made by a former proprietor of the registration of a similar collective mark or by its successor. Section 24

16 Without prejudice to the application of sections 6, 6bis, 6quater, 6sexies, 8 and 8bis, the Benelux Office may not register a Benelux application for a collective mark if the regulations governing the use and control of that mark have not been filed in accordance with the conditions laid down in section 21. Section 25 The proprietors of collective marks must notify the Benelux Office of any amendments to the regulations governing the use and control of a trade mark. This notification will be recorded by the Benelux Office. The amendments will not enter into force prior to the notification referred to in the preceding paragraph. Section 26 The right to institute proceedings for the protection of a collective mark is reserved to the proprietor of the trade mark. However, the regulations governing use and control may grant persons permitted to make use of the mark the right to act jointly with the proprietor or to join or act in the proceedings brought by or against the proprietor. Likewise, the regulations governing use and control may specify that, when acting alone, the proprietor may enforce the special interest of those using the mark and include in its claim for redress any particular damage incurred by one or more of them. Section 27 A. Without prejudice to the provisions of section 14, any interested party, including the Public Prosecutor, may claim that the right to a collective mark has lapsed if the proprietor of the trade mark makes use of it under the conditions referred to in the second paragraph of section 19, or authorizes or acquiesces in the use contrary to the provisions of the regulations governing use and control. Where the application for revocation is submitted by the Public Prosecutor, the courts of Brussels, The Hague and Luxembourg will have exclusive jurisdiction. Proceedings submitted by the Public Prosecutor will stay any other proceedings brought on the same grounds. B. The Public Prosecutor may claim the invalidity of the registration of a collective trade mark, where the regulations governing use and control are contrary to public policy, or where they fail to comply with the requirements of section 22. The Public Prosecutor may also claim the invalidity of amendments to the regulations governing use and control which are contrary to public policy or to the provisions of section 22 or which would have the effect of weakening the guarantees provided to the public by the regulations. The courts of Brussels, The Hague and Luxembourg will have exclusive jurisdiction to rule upon such proceedings; they will cancel ex officio the registration of invalidated registrations or invalidated amendments.

17 Section 28 Collective marks which have lapsed or have been invalidated or cancelled, as well as those in respect of which no renewal has taken place and no re-establishment as referred to in section 23 has been made, will on no account be used during the three years following the date of the registration of the lapse, declaration of invalidity or cancellation or the expiry of validity of the non-renewed registration, except by a party who can rely on an earlier right in a similar individual mark. PART III. TRANSITIONAL PROVISIONS Section 29 Without prejudice to section 30, the rights to individual and collective marks acquired in any of the Benelux countries pursuant to national law before the date of this Act s entry into force, which rights are exclusive and have not lapsed before that date, will be upheld. This Act will apply to those rights with effect from the aforementioned date. An exclusive right will also be deemed to have been acquired through the first use of a sign which serves to distinguish the goods of an undertaking and which would have constituted a trade mark if sections 1 and 2 of this Act had been applicable. The exclusive right which is accordingly deemed to have been acquired cannot, however, be invoked against parties who used that sign before this Act entered into force unless that use was followed by non-use for an uninterrupted period of five years. Section 30 The right acquired to a trade mark will lapse, with retroactive effect to the date of this Act s entry into force, if the trade mark is not applied for in the Benelux within a year of that date by taking advantage of the existence of the acquired right and with a statement, by way of an explanation, of the nature and timing of the events that created it and, where applicable, of the applications filed and registrations obtained in relation to that trade mark. This application will replace the applications for the trade mark in one or more of the Benelux countries, without prejudice to the rights acquired as a result of those applications. If, however, the applicant relies on an acquired right even though he knows or ought to know that that right does not exist, the application will be deemed to have been filed in bad faith. If on the date of this Act s entry into force a trade mark right is based on an international application, supported by a registration of origin obtained outside Benelux Territory, that right will be upheld independently of the requirements stated in the preceding paragraph. Furthermore, the acquired right to a collective mark will also lapse, with retroactive effect to the date of this Act s entry into force, if no regulations governing use and control have been submitted with the Benelux application referred to in the first paragraph. Sections 22, 24 and 27 (B) apply in that regard. If the right to a collective mark is based on an international application, supported by a registration of origin obtained outside Benelux Territory, this right will lapse with retroactive effect to the date of this Act s entry into force if, within a year of this date, the proprietor of the collective trade mark has not submitted any regulations governing use and control. Sections 22 and 27 (B) apply in that regard. Section 31

18 In derogation from section 10, the first registration of the Benelux applications referred to in section 30 will remain valid for between one and ten years. It will expire in the month and on the date of the Benelux application in the calendar year number that contains the same number of units as the calendar year number in which the right claimed was acquired. At the time of the application, the first renewal of the registration of these applications may be requested, for the duration determined in section 10. Section 32 An exclusive right to a trade mark upheld pursuant to sections 29 and 30 extends throughout the Benelux Territory with effect from the date of this Act s entry into force. This right will not, however, extend over the territory of any part of the Benelux territories: a. where it contravenes a right acquired by a third party that has been upheld pursuant to sections 29 and 30; b. where a ground for invalidity turns out to exist as referred to in section 14 (A) (1) (a) and (c), section 14 (A) (2), section 14 (B) (2) and section (27) (B). If two persons own acquired rights to the same trade mark, or own them in two of the Benelux countries, these rights extend to include the third country for the benefit of the person who first put the trade mark to genuine use in that country before this Act entered into force. If at the time of entry into force of this Act the trade mark has not been put to use in that country, this extension of rights will be for the benefit of the proprietor of the earliest acquired right. Section 33 If pursuant to section 32 a trade mark belongs to different trade mark proprietors in two or three of the Benelux countries, the proprietor of the trade mark in one of these countries cannot oppose the importation from another of the Benelux countries of goods bearing the same trade mark or claim compensation on account of such importation where the trade mark was affixed by the proprietor thereof in such other country or with its permission and where an economic link as regards the exploitation of the goods concerned exists between the two proprietors. Section 34 A. The Benelux Register will be open for the filing of applications with effect from the day after the date of this Act s entry into force. No more national applications will be admissible from this date of entry into force. B. The Benelux applications referred to in section 30 are free of charge and are subject to the procedural requirements laid down in the Implementing Regulations. The registration of these applications will state whether advantage has been taken of acquired rights and what has been submitted in that regard. C. The international applications which are based registrations of origin outside the Benelux Territory and which exist on the date of this Act s entry into force will be entered in the Benelux Trade mark

19 Registers ex officio and without charge, unless the proprietor of those applications has surrendered the protection arising from them for all the Benelux countries. Section 35 The order of priority of the Benelux applications referred to in section 30, irrespective of their actual date, and the international applications entered into the Benelux Register in accordance with section 34 (C) over the Benelux applications filed without acquired rights being claimed, will be deemed to have been determined on the date of entry into force of this Act. The order of priority of rights acquired in a Benelux country within the meaning of section 29 will be determined in that country, within the limits of the national law applicable prior to this Act's entry into force. PART IV. GENERAL PROVISIONS Section 36 In this Act, "Benelux Territory" is taken to mean the combined territory of the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands in Europe. Section 37 A. Unless territorial jurisdiction of the courts is expressly stated in a contract, this will be determined in cases involving trade marks by the domicile of the defendant or by the place where the obligation in dispute has arisen, or has been or should be enforced. The place in which the trade mark was filed or is registered will not under any circumstances be used as the sole basis for determining territorial jurisdiction. Where the criteria mentioned above are insufficient to determine territorial jurisdiction, the claimant may bring the case before the court of its address for service or residential address, or, if he has no address for service or residential address in the Benelux Territory, before the court of its choice, in Brussels, The Hague or Luxembourg. B. The courts will apply ex officio the rules laid down in subsection (A) above and will expressly confirm their jurisdiction. C. The court before which the main claim referred to in subsection (A) above is pending will receive applications for third-party claims, applications for the joinder and intervention of parties and related applications, as well as counterclaims, unless it does not have jurisdiction over the matter. D. The courts of one of the three countries will, if one of the parties so requests, refer disputes brought before them to the courts of one of the other two countries if these disputes are already pending there or if they are related to other disputes placed before those courts. Referral may only be requested when the actions are pending at first instance. This will apply to the benefit of the first court in which proceedings are initially brought, unless another court has given a decision in the matter which is not merely an internal provision; in which case referral will be to that other court. Section 38

20 The provisions of this Act do not adversely affect application of the Paris Convention, the Agreement establishing the World Trade Organization, the Madrid Agreement or the provisions of Belgian, Luxembourg or Dutch law giving rise to prohibitions on the use of a trade mark. PART V. SERVICE MARKS General Section 39 Parts I, II, IV, VI and VII apply mutatis mutandis to signs distinguishing services, hereinafter referred to as "service marks", on the understanding that similarity can also exist between services and goods. The right of priority referred to in Article 4 of the Paris Convention or arising from the Agreement establishing the World Trade Organization may also be invoked for service marks. Transitional provisions Section 40 A. Any party who, on the date of entry into force of the Protocol Amending the Uniform Benelux Trade Marks Act, uses a service mark in the Benelux Territory and, within a period of one year, to be calculated from that date, applies for that trade mark in the Benelux will, in determining the order of priority of that application, be deemed to have filed that application on the aforementioned date. B. The provisions of this part do not alter the rights arising from the use of a service mark in the Benelux Territory on the aforementioned date. C. The invalidity of an application as referred to in subsection (A) above may not be claimed on the grounds of the mere fact that, in order of priority, this application ranks after the application for a similar trade mark for goods. Section 41 The Benelux application referred to in section 40, which must be filed in the manner specified by the Implementing Regulations and with payment of the fees set by them, must be accompanied by: - a claim that the acquired rights exist; - specification of the year in which the service mark was first used, in order to satisfy the objective referred to in section 42. If, however, the applicant invokes an acquired right in the service mark, even though he knows or ought to know that that right does not exist, the service mark will be deemed to have been filed in bad faith. Section 42 In derogation from section 10, the first registration of the Benelux applications, referred to in section 40, will remain valid for between one and ten years. It will expire in the month and on the date of the Benelux application in the calendar year number that contains the same number of units as the calendar year number in which first use was made as stated in the application.