BENELUX
BENELUX
• 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.
58 World Intellectual Property Review e-Digest 2012
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
www.worldipreview.com
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