How can you register a Benelux trademark?

If you want to register a Benelux trademark, you can apply directly for your trademark online on the site of the BOIP. The Benelux Office for Intellectual Property (BOIP) is the official body for the registration of trademarks and designs in the Benelux.  Completion of all formalities takes on average 4 to 6 months, after which your trademark will be officially registered and protected. You can also opt for a priority registration, which will take just a few days. This procedure is great when you need quick protection, but can lead to cancellation later on, based on an opposition or a refusal on absolute grounds.

Before you start the procedure, first check online on the website of the BOIP whether older identical or similar trademarks already exist.  This registry contains not only Benelux trademarks, but also Community trademarks and International trademarks that are valid in the Benelux. You can also check directly the registers of the Office for Harmonization in the Internal Market (OHIM) for Community trademarks or of the World Intellectual Property Organization (WIPO) for International trademarks. Finally, you can check the different national trademarks for various European countries at the database of TMview. The good news is that these databases are up to date, easy to use and completely free! The bad news is that the BOIP will not automatically check whether your trademark application violates any previously registered trademarks. If you do not like to do this work yourself, you can ask the BOIP to do an informative search for you for a fee (the forms are available in Dutch and French), or you can hire a specialized trademark agent for assistance. Before starting the application procedure, it makes sense to check whether the internet domain name that corresponds with your trademark application is still available.

When you file your trademark application, you will have to specify the goods and services for which you want your trademark to be valid. This is done on the basis of an international classification system (the so called "Nice Classification"), which comprises 45 classes (34 different classes for goods and 11 for services). You can use the "Madrid Goods & Services Manager" to find the right class(es) for your trademark.  Alternatively, you can ask a professional advisor such as a trademark agent or a lawyer to assist you. Keep in mind that the list of goods or services for which your trademark is valid cannot be extended after registration of the trademark. It is thus important to make a realistic assessment of the future use of your trademark.

After you have filed your application, you will receive a confirmation of receipt and the BOIP will check whether the application meets certain minimal requirements (Is the trademark clearly presented? Is the name of the applicant clearly mentioned? Are the goods/services clearly described?). If you did not yet pay for your application, you will be given 1 month to do so. The "filing date" (which is important to determine the priority of your trademark application in relation to other applications) will be set at the date on which the minimum requirements have been fulfilled and the payment has been received. After approximately 14 days, the application will be published and you will be able to track the status of your application in the BOIP register (note that this is not yet a registration of your trademark, but only a publication of your request for registration).

Counting from the first day of the month after publication of your application, third parties will have 2 months to file an opposition against the application. An opposition can be filed if the new trademark application is considered to be identical to the prior mark for the same goods or services; if the new application is considered to be identical or similar to the prior mark for the same or similar goods or services and there is a likelihood of confusion in the mind of the public; or if the new application is liable to create confusion with a trademark that is considered to be well-known (a well-know trademark is a mark that has established enough goodwill with the public that it is protected even if it is not registered). In the opposition procedure, the BOIP will first encourage parties to settle their dispute. If a settlement fails, the BOIP will hear both parties and take a decision (either a rejection of the opposition or a refusal to register the application). Within 2 months of the decision, parties can lodge a petition with the Courts of Appeal of Brussels, The Hague or Luxembourg to obtain an order to cancel the decision of the BOIP.

The BOIP will also carry out a substantive examination of the trademark application (the so called "assessment on absolute grounds"). If the BOIP decides that your trademark is not fit for registration (for instance because it lacks distinctiveness, because it is deceptive or because it is contrary to morality or public policy), you will have 6 months to object to the refusal with the BOIP. If the BOIP confirms its refusal, you will have 2 months to lodge a petition with the Courts of Appeal of Brussels, The Hague or Luxembourg to obtain an order for registration of the trademark.

If your trademark application fulfills all the legal requirements, it will be registered in the BOIP trademark register and you will receive a certificate of registration. This procedure may take up to 4 months (and considerably longer if an opposition against your application has been filed or if the BOIP refuses your application on absolute grounds). As of the day of registration, you will officially enjoy all the rights of exclusivity that come with your trademark. The filing date (not the registration date) will be date used to determine who has the oldest right if a conflict with a third party occurs.

If you opt for a priority registration (also called accelerated registration), your trademark will be registered as soon as the formal requirements have been checked. This procedure usually takes only a couple of days' time. However, you should keep in mind that the assessment on absolute grounds (and a possible opposition against your trademark) will take place after registration. In other words, your trademark registration may still be cancelled after its registration.

What are the fees for application of a Benelux trademark?

The basic cost for applying for a Benelux trademark in 3 classes is only 240 EUR. For each additional class (after the third class), you will pay an extra 37 EUR. For a priority registration (up to 3 classes), you will pay a supplementary fee of 193 EUR (and a supplementary fee of 30 EUR after the third class). These costs will not be reimbursed in case of non-registration following an opposition or a refusal procedure. The renewal fee (after 10 years) is currently 260 EUR (for up to 3 classes). There is no annual fee to maintain your registration. You will find the full list of charges and fees on the website of the BOIP. For a Community trademark (EU), the basic fee is 900 EUR for an online application.

If you use professional advisors (such as a specialized trademark agent or lawyer), you will have to add their fees to these basic costs. Using professional advisors is often a good idea to increase the success of your application and to bolster the effective power of your trademark. Always make clear arrangements with your advisors on their fees.

If you need any advice with regard to trademark law in Belgium, do not hesitate to contact me. 

Author: Bart Van Besien

Attorney

Finnian & Columba

Belgium

bart@finnian.be