You will need to maintain your trademark or design right for it to remain valid. This means that you must monitor your trademark or design, use it, and keep it up-to-date. You will must renew your registration on time. It is important that we always have your latest contact details. It can also be important that you timely extend the storage period of your i-DEPOT.
A trademark or design registration helps you to take action against competitors who make unauthorised use of (counterfeit) your trademark or design.
You can take action not only against later Benelux trademarks or designs, but also against all trademarks and designs in the Benelux, including EU trademarks and Community designs and international trademark and design registrations that are valid in the Benelux.
Once your trademark has been registered, you must actually use it. You must be able to demonstrate that you are using it. If it can be demonstrated that your trademark has not been used for longer than five years, it could be revoked (in its entirety or for some of the goods or services). You should therefore be sure to collect sufficient evidence, such as invoices showing your trademark or advertising leaflets.
Use your trademark in the same way as in your registration. If you modernise your logo, it may be the case that your current trademark registration no longer provides the right protection and be wise to obtain a new trademark registration. It is best to take advice from an external IP professional in this respect.
Following registration, we will send you a letter referring you to the Benelux Trademarks Register. The Register is always up to date.
Should you require proof of your registration, you can simply print a copy from the Register. To do this, search for your trademark in the Benelux Trademarks Register and make a copy of the page. Many official bodies accept this as proof of your registration. Would you prefer to order an authenticated copy from us (for a fee)? If so, click on 'Order' at the bottom of the Trademarks Register.
It is important to ensure that your details in the Trademarks Register are correct and up-to-date. The commonest form of modification is of course a change of address. But there could also be cases where:
- the name of your company changes
- the correspondence address changes
- you transfer (sell) your trademark
- you grant (or wish to revoke) a licence
- you pledge your trademark to the bank (or wish to revoke a pledge)
- a party imposes a seizure on your trademark registration (or wishes to lift a seizure)
- you wish to modify the regulations governing usage and supervision (in the case of a collective trademark)
- a representative has been changed or appointed (the representative will report this change or appointment).
There may also be cases where you want to cancel some of the goods or services for which your trademark is registered from the register (limitation of the statement of goods and services), or where you want to cancel the registration in its entirety (cancellation). All of these aspects must be correctly laid down in the Trademarks Register for you to be able to invoke your rights.
Which modifications are not possible?
- The trademark itself can never be modified (e.g. spelling, image)
- Additions to the goods and services;
- A collective trademark can never be converted into an individual one
- An individual trademark can never be converted into a collective one.
Renew trademark registration
A trademark registration remains valid for ten years from the date on which the application was filed (filing date). You can renew your registration for unlimited ten-year periods. This means that you can protect your trademark for all time.
You will however need to renew the registration on time (renewal). We will send you a message on this subject using the address given in the Trademarks Register or the correspondence address known to us. You cannot derive any rights from not receiving this letter, regardless of the reason. It is your own responsibility to make sure that your registration is renewed on time. Be sure to inform us of changes of address in good time.
If you wish, you may renew the trademark for certain registered classes only. It is, however, not possible to cancel terms in a given class outright. In order to do so, you must first submit a restriction for the relevant class. For submitting a restriction, see the tab 'Modify trademark'.
You can renew a trademark registration six months before the expiry date of your trademark up to six months after the trademark's expiry date.
A surcharge applies to renewing after the expiry date. If you renew within six months after the expiry date, we will charge a fee of 135 euro over and above the renewal fee.
Once the six-month period after the expiry date has passed, it is no longer possible to renew your trademark. You will need to apply for a new trademark registration.
You must monitor your trademark in order to protect it properly. This involves actively looking out for infringing trademarks or signs that your trademark is being used by others. One way of doing this is to carry out an online search from time to time.
You can also actively monitor whether any applications are made to register infringing trademarks. For this purpose you should regularly consult the Benelux Trademarks Register. You can also take out a subscription on trademarks applied for at a later date. For more information on this subject, contact our Information centre. You can also outsource the monitoring of your trademarks to an IP professional.
What if I fail to monitor my trademark?
If you fail to actively monitor your trademark and take action against trademark infringements, you expose yourself to the risk that your trademark will be less well protected. This could even result in your trademark being revoked.
Action against trademark infringement
What should I do if someone infringes my trademark?
There are two conceivable situations:
1. You have seen an application to register a conflicting trademark in the Benelux Trademarks Register.
If another party has applied to register a trademark that conflicts with or possibly infringes yours, you can write to the other party with a request to stop using the conflicting trademark. If this fails to yield the desired result, you can file an opposition.
You file the opposition directly at BOIP. You must do this within two months from the date on which the conflicting trademark was published in the Trademarks Register. This date is given under the heading 'Publication Date' in the Trademarks Register.
The opposition procedure is a simple and relatively inexpensive way of opposing – based on your own trademark rights – the registration of a new, similar trademark for the same or similar goods or services. This makes it possible for you to resolve your trademark dispute without resorting to the law. It may be advisable to use the services of an IP professional. More about the opposition procedure
If the two-month opposition period has passed, you can still take action against the conflicting trademark by:
- initiating a cancellation procedure at BOIP
BOIP can rule on the validity of the trademark registration in a cancellation procedure. This may result in the trademark being deleted. More information
- you can take your registration issue to court
Not only can the court rule on the validity of the trademark: it can issue an injunction against using the infringing trademark, possibly with a seizure on goods, compensation for damages or even surrender of the profits (in the case of a wilful infringement).
2. You have discovered a conflicting trademark (or sign) on the internet or elsewhere
If you discover a conflicting trademark on the internet or elsewhere and it is not listed in the Trademarks Register, there are two things you can do:
- You can write to the other party and request that it stops using the conflicting sign:
- You can present your trademark registration to a court of law. If the court rules that the sign constitutes an infringement, it may issue an injunction against using the infringing sign, possibly through a seizure on goods, compensation for damages or even surrender of the profits (in the case of a wilful infringement).
If you discover a trademark infringement, the best course of action is to seek the advice of an IP professional. It is advisable to have yourself assisted by an IP professional even if you take actions such as filing an opposition.