眾律國際法律事務所

Introduction:

Language: Dutch    

Capital: Amsterdam

Area: 41 543 km²

Population: 16,94 millions (2015)

Currency: Euro

Religion: Roman Catholics (11%), Protestant Church (8.6%), Islam (5.5%)

Geographical situation: in Western Europe with three island territories in the Caribbean. The European part of the Netherlands borders Germany to the east, Belgium to the south, and the North Sea to the northwest, sharing maritime borders with Belgium, the United Kingdom, and Germany.

International treaty membership:

Singapore Treaty on the Law of Trademarks (January 8, 2014)

Trademark Law Treaty (August 11, 2012)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (April 1, 1998)

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (August 9, 1985)

Convention Establishing the World Intellectual Property Organization (January 9, 1975)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (August 20, 1962)

Madrid Agreement Concerning the International Registration of Marks (March 1, 1893)

Legislation:        

Netherland is part of the Benelux organization which have common rules on IP for the three countries.

Executive Rules under the Uniform Benelux Law on Marks (of May 31, 1989)

Uniform Benelux Law on Marks (of March 19, 1962, as amended on November 10, 1983)

Government Institutions:

Netherlands Patent Office

Netherlands Enterprise Agency

Ministry of Economic Affairs

Type of trademark:

Registrable as trademarks are word marks, device marks, three-dimensional marks, colour marks, slogan marks and sound marks. Holograms are registrable when capable of being represented graphically.

Mark registrable: trademark, collective mark, well known mark.

Ground for refusal :

No right to a mark shall be acquired by:

- the filing of a mark that, regardless of the use being made thereof, is contrary to morality or public policy in one of the Benelux countries, or in respect of which Article 6ter of the Paris Convention provides for refusal or invalidation;

- a filing made for goods or services in respect of which use of the mark is likely to deceive the public;

-the filing of a mark resembling a collective mark, regardless of the goods in respect of which it was filed, to which a right was attached which lapsed in the course of the three years preceding the filing;

-the filing of a mark resembling an individual mark filed by a third party for similar goods or services and to which a right was attached which, on account of the expiration of the registration, lapsed in the course of the three years prior to the filing, unless the said third party gave his consent or there was non-use of the said mark

-the filing of a mark likely to cause confusion with a well-known mark, within the meaning of Article 6bis of the Paris Convention, and owned by a third party who has not given his consent;

- filing effected in bad faith,

Application content:

The Benelux filing of a mark shall be effected in Dutch or French by the submission of a document containing:

-the name and address of the applicant;

- a reproduction of the mark;

- a statement of the color or colors where the applicant claims them as distinctive elements of the mark;

- where appropriate, a statement that the mark or a part of the mark is in three dimensions (plastic mark), constituted inter alia by the shape of the product or of its packaging;

- a list of the goods and services for which the mark is intended;

- where appropriate, a statement that the mark is a collective mark;

- the signature of the applicant or of his representative.

The date of filing shall be the date of receipt, either by the Benelux Office or by a national office, of all documents on condition that they satisfy those requirements.

Application process:

There is only examination on absolute grounds; the official search has been abandoned. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.

After the examination on formalities and absolute grounds, the application is published in the online Benelux Bulletin for opposition purposes (opposition shall be done within 2 months after publication). The whole procedure takes between 3 and 4 months if there are no complications. There also exists an expedited registration procedure. In this case the mark is registered and published after the formalities check. The mark could in this case still be refused on absolute grounds or due to a successful opposition.

Refusal:

If the application is lacking elements and the applicant fails to remedy the deficiencies, or pay the fees, the application will be rejected. The registration of a mark can also be rejected on absolute ground for refusal.

Rights of exploitation and related delay:

The trademark duration is valid for 10 years. The request for renewal of the registration of a Benelux filing shall be filed with the Benelux Office. It can be renewed indefinitely for 10 years each time. Renewal must be applied for within the period of six months prior to the expiration of the registration.

The proprietor of a mark may, by virtue of his exclusive right, oppose:

- any use made of the mark or of a like symbol for the goods or services in respect of which the mark is registered, or for similar goods or services;

- any other use, in economic intercourse, of the mark or of a like symbol made without a valid reason under circumstances likely to be prejudicial to the proprietor of the mark. Subject to the same conditions, the proprietor may, by virtue of the said right, claim indemnification for any damage sustained by him as a result of such use.

Transfer and conditions:

Any transfers, assignment or licensing, shall be done in a written agreement and be submitted to the Benelux Office. This transfer shall concern the entire Benelux territory. If transfers does not fill those conditions it shall be declare as null and void.

Certification:

The Benelux Office shall register, forthwith, instruments of Benelux filings for the goods or services indicated by the person having effected the filing and shall issue a certificate of registration to the proprietor.

Withdrawal and cancellation:

A right to a mark shall lapse:

- by voluntary cancellation or by expiration of the registration of the Benelux filing; 2. - by cancellation or expiration of the international registration, or by renunciation of protection within the Benelux territory, or, for international registration, as a result of the fact that the mark no longer enjoys legal protection in the country of origin;

- insofar as, either within the three years following filing or for an uninterrupted period of five years, the proprietor of the mark or a licensee has failed to make any normal use of the mark within the Benelux territory without a valid reason; in case of litigation, the court may place the burden of proof of user, either wholly or in part, upon the proprietor of the mark; however, non-use during a period which precedes the issue of the writ of summons by more than six years must be proved by the party relying on it;

- insofar as a mark, after having been duly acquired, has, by the proprietor's own doing, become the usual designation of a product.

The proprietor of a registration done in respect of a Benelux filing may at any time request the cancellation of his registration. However, if a license is on record, then cancellation of the registration of the mark or the license can only be requested jointly by the proprietor of the registration and the licensee.

Customs protection:

The Anti-Piracy Regulation[i] ("APR") provides the owners of IP rights in the EU with a useful and cost-efficient weapon against the trade in goods that (are suspected to) infringe IP rights. It allows customs authorities (ex officio or at the request of the rights owner) to seize and even destroy counterfeit goods at the borders before they enter the EU market, without needing a court order. In many countries these measures are not applied very effectively; in fact the EU recently launched an EU customs plan to promote the APR's application. The Dutch customs authorities, however, are very active in enforcing the APR. They have a thorough understanding of trade routes of counterfeit goods and are well equipped to detect infringing goods. For example, they use huge x-ray machines to scan the contents of containers and even have a mobile laboratory at their disposal to analyze chemical substances for patent infringement. Unlike many other European countries, the Dutch customs authorities also act on patent infringements but - due to the complexity - only at the rights owner's request. Dutch customs authorities are very open to cooperating with rights owners to ensure optimal results. You can increase the effectiveness of custom measures considerably by providing the authorities with detailed information (and where useful: training) on suspected infringers, trade routes and means of detecting infringement, such as information on hidden product features or technical details. Customs measures in the Netherlands can be especially effective because many goods enter the EU market via the harbour of Rotterdam and Schiphol Airport: the "gateways to Europe". Hence acting here can imply stopping infringement in the entire EU.

The right-holder can apply to Customs to take action if he believes that his IP right is being infringed. This can be done in any Member State. The application can be a national or a Union application. An application has a maximum term of validity of one year, but this can be extended. If an application is approved the right-holder is designated from then on as the ‘holder of the decision’. The IPR Team processes the application and gives the submitting party its written decision within 30 days of its receipt. The application is free of charge. If the application is incomplete the applicant can provide the omitted information within 10 working days. If the information is not received within this period the application is rejected.

The application must include all relevant information and supporting documents.

Sources:

Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures t be taken against goods found to have infringed such rights ("Anti-Piracy Regulation" or "APR")

Wipo.int:

Executive Rules under the Uniform Benelux Law on Marks (of May 31, 1989)

Uniform Benelux Law on Marks (of March 19, 1962, as amended on November 10, 1983)

Vincent Lagier