Trademarks Briefing (Devices) - the Netherlands

Please give details of the major acts and directives governing trademarks.

• Benelux Convention on Intellectual Property: Convention Benelux en matière de propriété intellectuelle (marques et dessins ou modèles) (CBPI). This incorporated Directive 2004/48/CE, which came into force in September 2006, and was adopted in the Netherlands on 1 February 2007.
• Protocol on the Privileges and Immunities of the Organization the Benelux Countries as regards Intellectual Property (Marks and Drawings or Models): Protocole sur les Privileges et Immunites de L’organisation Benelux en Matiere de Propriete Intellectuelle (Marques et Dessins ou Modeles).

The 2006 Benelux Convention replaced all other conventions, uniform laws and amending protocols on trademarks, drawings and designs with a single convention governing trademark and design law across the Netherlands, Belgium and Luxembourg. It also established the Benelux Office for Intellectual Property (BOIP).

Is your jurisdiction party to any international conventions on trademark protection? When did it join these conventions?

The Netherlands is party to the following:

• Benelux Intellectual Property Treaty, since 2006;
• WIPO Paris Convention for the Protection of Industrial Property 1883, since July 1884. http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html;
• WIPO Madrid Agreement Concerning the International Registration of Marks 1891, since March 1893. http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo015.html;
• WIPO Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989, since April 1998. http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html;
• WIPO Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks 1957, since August 1962. http://www.wipo.int/treaties/en/classification/nice/;
• WIPO Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks 1973, since August 1985. http://www.wipo.int/treaties/en/classification/vienna/summary_vienna.html.
• WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) 1994.

The Netherlands is signatory to:

• WIPO Trademark Law Treaty 1994 (signatory, since October 1995, ratified September 1996, but not yet in force). The Netherlands and Belgium will become bound by the Treaty three months after the deposit of the instrument of ratification of Luxembourg. http://www.wipo.int/treaties/en/ip/tlt/.

The Netherlands is also party to European directives which govern the Community Trademark (CTM) system, these include:

• Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community Trade Mark http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:078:0001:0042:EN:PDF;
• Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trademark; http://oami.europa.eu/en/mark/aspects/reg/reg2868.htm.

Which are the major bodies responsible for assessing trademark applications and registering trademarks?

An application for a trademark protection must be made to the Benelux Office for Intellectual Property (BOIP). The Benelux trademark grants automatic protection in Belgium, the Netherlands and Luxembourg. Protection cannot be obtained for each individual country.

In addition, an applicant may:

• apply for a European Community Trademark (CTM). This offers an applicant protection across all EU member states through a single application filed directly with the Office for Harmonization in the Internal Market (OHIM) (the trademarks and designs registration office of the European Union) or forwarded to the OHIM by the BOIP together with a handling fee of €25. A CTM offers the same term of protection as that for a trademark registered in The Netherlands – 10 years. A CTM can be renewed indefinitely for further 10-year periods. If the trademark is refused in one country, it will be invalid in all countries. Applications should be made via the OHIM CTM application: e-filing form, available from the OHIM website at: http://oami.europa.eu/ows/rw/pages/QPLUS/forms/electronic/fileApplicationCTM.en.do.
• apply to register its trademark through the international Madrid Protocol system which covers countries which have joined the Protocol. It is administered by the World Intellectual Property Organisation (WIPO) in Geneva. An application for international registration must be processed and forwarded to WIPO by the national IP office (the BOIP in this case). WIPO then checks the application, records the trademark in the International Register if all requirements are met, and publishes the registration in the ‘WIPO Gazette of International Marks’. Contracting states may refuse protection under their respective national legislation within one year (Madrid Agreement) or 18 months (Madrid Protocol). If protection is granted, the international registration holder has the same rights as an owner of a national trademark. If one country refuses the trademark, protection is still maintained in the other chosen countries. The term of protection of an international mark is 20 years under the Madrid Agreement and 10 years under the Protocol. It can be renewed indefinitely. Applications must be presented using forms issued by WIPO, which are available at http://wipo.int/madrid/en/forms/. General information on the Madrid system is available at http://www.wipo.int/madrid/en/.

What is the procedure for registering trademarks? What are the key stages of the process? What fee is payable?

A trademark registration application should be made (in either Dutch or French) to the Benelux Office for Intellectual Property (BOIP), online via BOIP Online Filing or alternatively, via a paper form, returned by post, fax or delivered in person.

The application should include:

• the applicant’s name and address;
• a description of the trademark; and
• a list of the categories of goods or services for which registration is sought.

Applicants can do their own search for free, or for a fee of approximately €150 can request the BOIP to carry out an availability search, , of the Trademarks Register in order to determine whether or not their trademark conflicts with an already-registered mark for specific products or services which might obstruct the mark’s registration. The Dutch Chamber of Commerce can also be asked to carry out a search, for a fee of approximately €90. The Trademarks Register contains all trademark applications and registrations which are valid across the Benelux countries. The Register includes Community (ie European) trademarks and international trademarks which designate the Benelux as well as Benelux trademarks.

The BOIP sends the applicant a search report within three weeks, based on specific verbal and visual search criteria. Upon receipt of the report, the applicant can consider the older trademarks and decide whether to withdraw their application before it is published in the Benelux Trademarks Bulletin.

Applicants can also monitor the status of their own applications and registrations, and check out existing trademarks held by other parties via the Trademarks Register. The Register also acts as the official publication for Benelux trademarks; copies from the Register are accepted as proof of an application or registration by many authorities. Applicants can produce their own copy (free of charge) by clicking on “Print” or request a certified copy (for a fee), by clicking “Order”.

However, it does not necessarily mean that a trademark will be granted if it does not already appear in the Register; therefore an applicant should consider consulting a trademark agent or a specialist intellectual property lawyer to carry out the examination.

Applicants can also subscribe to the “subsequent trademark notification” service to keep up-to-date with new potential trademark applications which are in conflict with their own mark. Subscription is valid for one year.

Once an application is received by the BOIP, it confirms receipt. This allows the applicant to monitor the status of their application in the Trademarks Register. Once received the BOIP will check to see whether the application complies with the minimum requirements, ie that the applicant’s name is given and the classes of goods and services are clearly described. If the application is for a collective trademark, the BOIP will check to see if regulations for use and control have been included. If these minimum requirements are not met the application is returned to the sender for defects to be remedied. Once an application has been received by the BOIP it sends out a payment summary, payment should be made within one month. When both the minimum requirements are met and payment is made the BOIP sets the filing date.

Once the filing date has been determined and the goods and services have been correctly classified in accordance with the international Nice classification, the application will be published on the Trademarks Register. The applicant will then receive a confirmation of publication. Publication starts the substantive procedure.

Once an application has been published, the owner of an older trademark has two months in which to file an opposition with the BOIP, or lodge an action before the courts, starting from the first day of the month following that in which the application was published on the Trademarks Register. Two months after the opposition was filed, the BOIP will notify the parties of the commencement of the opposition proceedings. The opposing party must file its written arguments within two months of notification, and the applicant then has two months to respond.

Both parties are initially given the chance to resolve their conflict mutually. If this fails, the BOIP can take the decision to either reject the opposition, or if it is found to be legitimate, refuse registration, but only after both parties have been able to exchange arguments. BOIP decisions are subject to appeal. An appeal against a BOIP decision can be made before the courts of appeal in The Hague (Gerechtshof) (or the relevant appeal court for the Benelux country: Hof van Beroep or Cour d’appel in Brussels or Cour d’appel in Luxembourg).

The Courts can also be asked to ban the infringing party from using the trademark, if necessary with confiscation of goods or an award of damages. Deliberate forgery or placing counterfeit marks or brand products on the market is covered by the Act on the Sanctioning of Counterfeiting where a fine of €500–€500,000 or imprisonment for between three months and three years may apply.

The BOIP is also charged with conducting a substantive assessment of a trademark, the so-called assessment on absolute grounds. Here, if a mark is refused registration by the BOIP because, for example, it is not distinctive, the applicant has a maximum of six months to submit a written objection against the refusal. If the refusal is upheld by the BOIP, it will then make a definitive refusal decision. An appeal can be made against this definitive decision before the courts of appeal in The Hague (Gerechtshof), in Brussels (Hof van Beroep or Cour d’appel) or in Luxembourg (Cour d’appel).

On 28 July 2008 new guidelines (available to download from the BOIP website at http://www.boip.int/pdf/DG/20081105_richtlijnenweigering.pdf) were issued; they outline the BOIP criteria used to assess trademarks on absolute grounds. Their main function is to provide users with information and enhance the predictability of BOIP decisions. The new guidelines, insofar as possible, follow the same format as the old version issued in September 2004. The guidelines are only available in Dutch and French.

After all this, if an application fulfils all the legal requirements, and the BOIP decides to register the trademark, it will send the trademark owner a registration certificate and enter the mark, its number and the registration date into the Trademarks Register. If, on the other hand, the registration is rejected, it is possible to appeal to the courts of appeal in The Hague (Gerechtshof), in Brussels (Hof van Beroep or Cour d’appel) or in Luxembourg (Cour d’appel). If the trademark cannot be registered the filing fees will not be refunded.

It is possible to apply for accelerated registration upon payment of an extra fee. As soon as the trademark has been accepted and no opposition has been lodged the definitive proof of registration is issued. The service applies to all accelerated registrations.

Changes and amendments to details recorded in the register can be made via the form for the recordal of changes (modifications) in the register. The completed form should be sent to BOIP either by post or fax.

It is possible to make the following changes to a trademark registration application:

• company name and/or address;
• correspondence address;
• agent;
• limitation of the goods and services list (extension is not possible)
• transfer;
• licence registration and/or deletion;
• registration and/or deletion of rights of pledge and attachments; and
• in the event of a collective trademark, regulations on use and control.

It is not possible to make the following changes:

• the trademark itself can never be changed;
• the list of goods and services can never be extended (however it can be limited); and
• a collective trademark can never be converted into an individual trademark (and vice versa).

At present, there is no online procedure for recording changes in the Trademarks Register and for renewals; they have to be submitted either by post or fax. However, upgrades to the BOIP’s online filing system currently underway will shortly lead to an online tool being available.

Statutory fee information can be found on the BOIP website at http://www.boip.int/en/tariffs.html.

What signs cannot be registered as trademarks in The Netherlands?

In the Netherlands a trademark cannot be registered, on absolute grounds, if it is:

• not distinctive, a trademark should enable the identification of the particular products or services of one company when compared with those of another;
• contrary to public order or morality;
• deceptive and could therefore deceive or mislead the public; or
• consists of flags, arms and other official emblems of states or international organisations which are registered in accordance with Article 6 of the Paris Convention. Trademarks using these can only be registered if the state or organisation in question has given permission

Specific grounds for exclusion apply to shape marks which are intended to avoid any overlap with other intellectual property rights ie design law and patent law. A shape cannot be a trademark if it (1) results from the nature of the goods themselves, (2) gives a substantial value to the goods, or (3) is necessary to obtain a technical result.

Under these circumstances the BOIP is obliged to refuse registration. The Court’s can also decide, for the same reasons that an already-granted trademark is not valid, declaring it to be null and void.

What is the test for obtaining trademark protection?

A trademark can be registered if it is a sign which is capable of being represented graphically and which can distinguish the goods and services of one enterprise from those of another.

A sign must be distinctive in relation to the goods or services for which protection is sought and must not be purely descriptive of the goods/services in question.

Three-dimensional trademarks are also capable of being registered in the Netherlands.

For how long is trademark protection given? Is it possible to gain extensions in protection?

A trademark registration is valid for a period of ten years from the date on which the application was filed. A trademark registration can be renewed indefinitely for further consecutive ten-year periods upon payment of the prescribed fees.

The BOIP sends reminders to the address referred to in the register. However, failure to receive a reminder, for whatever reason, does not entitle the owner to any additional rights. Renewing registration on time is and remains the owner’s own responsibility. Renewal registration should be commenced six months before the expiry date.

When is a registered trademark infringed?

A registered trademark is infringed in the following circumstances:

• the use of signs that are identical or similar to the trademark in relation to the same or similar goods or services, on the ground of a likelihood of confusion between the signs;
• the use of a similar sign in relation to dissimilar goods or services when use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark (only for owners of well known trademarks); and
• the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

The BOIP offers an annual subscription service, the ‘subsequent trademark notification’ service designed to keep trademark owners up-to-date with new trademark applications that could potentially be in conflict with the owners own mark.

What protection is available for non-registered trademarks?

In principle, the Dutch legal system does not award any protection to unregistered trademarks, or for goodwill resulting from marketing activities relating to these. However, under certain circumstances, in the absence of registered trademark protection it may be possible to rely on the Dutch civil law doctrine of ‘passing off’. This doctrine will be particularly relevant if a competitor is copying, for example, packaging, product shapes or flavours. According to the doctrine of passing off, copying becomes unlawful if a competitor does not create sufficient differences from, for example, a party’s product shape and so creates a risk of confusion that might reasonably have been avoided. This implies that there is an obligation for the competitor to do what is reasonably possible and necessary to prevent, due to similarity, a risk of confusion (direct or indirect) being created or increased. A passing off action may also be brought as a complementary action to a registered trademark infringement action.

What is the process for enforcing brand or trademark infringement?

With registered trademarks, an action for infringement begins with a writ of summons (dagvaarding/citation). A writ of summons must be served by a bailiff. Once the writ is served, the proceedings are considered to be pending. The writ is the written statement of the claimant’s case and must contain a full description of the case and indicate the evidence the claimant will rely on. The defendant’s statement of reply must contain a written statement of its case and indicate all the evidence it intends to rely on. The statement of reply may also contain a counterclaim in the action (such as a claim for a finding of invalidity or revocation of the trademark).

In normal proceedings on the merits, following the defendant’s statement of reply the judge may give an interim order to the parties to appear in court to provide additional information, to investigate the possibility of a settlement, or for case management purposes. During this hearing the advocates will plead the most essential part of the case. The filing of subsequent statements of rebuttal and rejoinder may follow the interim order of the judge, but this is a matter for the court’s discretion.

There are strict deadlines for the filing of briefs and these can be extended only in exceptional circumstances or with the consent of the other party. The official language of the courts is Dutch, and all briefs filed in court must be in Dutch. Written evidence that supports the briefs may be in English and, in exceptional circumstances, German or French.

The court has the authority to pass judgment on the documents that are submitted by the parties. However, at the request of either party the court may order an oral hearing, during which the advocate of each party will have the opportunity to plead its case and respond to its opponent’s case. There is no witness examination at these hearings. Generally, all hearings are public and normally a representative of each party will be present at the hearing.

The court will give its decision after the oral pleadings, usually within one to two months. This decision may be the final decision, or an interim decision. An interim decision may, for instance, be a stay of the matter, or an order for one or both parties to produce additional evidence.

The fact that the Benelux countries share one trademark system means that the orders given by the Dutch courts will cover the three jurisdictions of the Netherlands, Belgium and Luxembourg, unless otherwise provided by the court.

What is/are the limitation period(s) for filing a trademark infringement claim?

If, as the owner of a trademark, you do not take action against the use or registration of a younger registered trademark for more than five years, you will be unable to seek compensation of damages. This period commences on the day following the day on which the injured party became aware of the loss and in any case ends 20 years following the event that caused the loss.

If, as the owner of a trademark, you wish to submit an opposition against a more recent trademark application which infringes your registered trademark, a two-month deadline applies, starting from the first day of the month after publication of the application.

Under what circumstances can the registration of a trademark be revoked, refused, removed or cancelled?

A trademark can be revoked if:

• it has genuinely not been used in the course of trade in Benelux for an uninterrupted period of five years in relation to the goods or services for which it was registered;
• it has become a generic term due to the trademark owner’s inactivity; or
• it is deceptive or confusing to the public, for example as to the origin or nature of the goods.

What remedies are available to the brand owner?

The remedies available to a trademark owner for infringement of their mark include:

• injunctions, with penalties for breach;
• damages or an account of profits;
• restitution of any profits resulting from the infringement;
• seizure of infringing articles;
• delivery-up to the claimant, or destruction, of infringing goods;
• corrective announcements/advertisements (at the infringer’s expense);
• an order for production of accounts, including details of the number of products sold and their price and profit margins, to ascertain loss/damage; and
• an order to provide information about manufacturers, suppliers and business customers.

Useful contacts

Ministerie van Economische Zaken, Octrooicentrum Nederland (Ministry of Economic Affairs, Netherlands Patent Office)

Postal address:

P.O. Box 5820,

2280 HV Rijswijk (ZH),

The Netherlands

Office address:

Patentlaan 2,

2288 EE Rijswijk (ZH),

The Netherlands

Tel: [phone]

Web: http://www.octrooicentrum.nl (English version: http://en.octrooicentrum.nl/home.html)

Email: [email protected]

Benelux Office for Intellectual Property (BOIP)

Bordewijklaan 15

NL-2591 XR The Hague

The Netherlands

Postal address: Benelux Office for Intellectual Property, P.O. Box 90404, NL-2509 LK, The Hague, The Netherlands

Tel: [phone]

Web: http://www.boip.int/en/homepage.php

Email: [email protected]

Office for Harmonization in the Internal Market (OHIM) (the trade marks and designs registration office of the European Union)

(Trade Marks and Designs)

Avenida de Europa, 4

E-03008 Alicante

Spain

Tel: + 34 96 513 9100

Email: [email protected]

Web: http://oami.europa.eu/ows/rw/pages/index.en.do

World Intellectual Property Organisation (WIPO) - http://www.wipo.int