Three important changes to Benelux trademark law enter into force today

These three changes help to further modernise and fine-tune a professional Benelux trademark system.

Trademark law is facing its most significant reform since the introduction of the unitary EU-wide trademark system back in 1996. This reform does not only bring substantial changes to Community trademarks, it also impacts owners of national trademarks in the EU. On 1 March 2019 the amended Benelux Convention on Intellectual Property (BCIP) implementing these new changes into Benelux trademark law, enters into force. Below we discuss 3 main changes that significantly impact trademark registration and protection as from 1 March 2019.

A first important change is the extension of the absolute grounds for exclusion of 3D or shape trademarks to “other characteristics of the goods”. Shape marks entail three-dimensional signs, i.e. the shape of a product or the shape of a package. Required is that the trademarked shape can determine the origin of the goods. There are however three absolute grounds for exclusion of shape trademarks, notably when the signs consist exclusively of a shape which (1) is determined by the nature of the goods, such as the classical example of banana-shaped boxes for banana’s, (2) is necessary to obtain a technical result, such as Lego building blocks, or (3) gives a substantial value to the goods, such as a high chair for children.

Under the amended BCIP, these grounds for exclusion are extended to “other characteristics of goods”. Therefore, under the new regime it will be possible to refuse trademark protection based on this ground of exclusion, even beyond shape. One hypothetical example of a sign that consists exclusively of ‘other characteristics’ that give substantial value to the goods could be a sound mark consisting of a specific sound of a motorbike that may appeal to a significant part of the relevant public to the extent that it indeed affects the consumer’s choice of purchase. An olfactory mark consisting of a smell for a perfume could in turn be an example of a sign that consists exclusively of ‘other characteristics’ that result from the nature of the goods.[1]

Secondly, the amended BCIP no longer contains a requirement of a graphic representation of a sign in order to qualify for trademark protection. The requirement of graphic representation of a sign led to a lot of discussion in relation to less conventional trademarks, such as sounds, smells, holograms, flavours and colours. For sound marks for example, the discussion arose whether the requirement of graphic representation was fulfilled when a sound was registered as a sonogram or on a sound medium such as a MP3 file. The question of graphic representation arose even more in relation to olfactory- and flavour marks. Was the description of the smell or flavour sufficient or was it required that the applicant additionally filed a sample or provided the chemical formula?

Under the new regime, the requirement of graphic representation is replaced by a more flexible requirement that the sign applied for be “capable of distinguishing the goods or services of one company from those of another company” (the essential function of a trademark), and “being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.

Lastly, the new BCIP introduces the new category of “certification marks”, thereby amending the already existing category of collective marks.

According to the new BCIP, a certification mark is a sign that guarantees that the products or services bearing the mark possess certain characteristics even if they come from different undertakings, such as quality criteria, origin or production methods. However, unlike “collective marks”, certification marks cannot serve as an indicator of origin.

Consequently, under the new BCIP most “old” collective marks will now qualify as certification marks. For both the certification and collective marks, those characteristics are laid down in the regulation for use of the mark that must be filed together with the application for such mark.

The "new" collective trademark that is introduced on 1 March 2019 is a sign that marks the products or services as coming from a member of an association that owns the collective trademark. Unlike the certification trademarks and the “old” collective trademarks that can be owned by any entity, the “new” collective trademarks must be owned by an association or legal entity under public law.

A transitional arrangement is provided for the existing “old” collective trademarks(i.e. filed before 1 March 2019) that have to be converted. The owners of these trademarks must specify at the latest upon renewal of the trademark whether their trademark is a collective or certification mark under the new legislation.

The three changes discussed above provide very welcome clarifications to the Benelux trademark law. Even more importantly, they help to further modernise and fine-tune a professional trademark system and ensure a more thorough protection for trademark owners going forward.

[1] EUIPO, Guidelines for Examination of European Union Trade Marks, Part B Examination, Section 4, Chapter 6, 2017, p. 9.