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 designs and international trademark and design registrations that are valid in the Benelux.
Unlike trademarks, you are not required to use your design right for it to remain valid. You do of course need to renew your design registration on time and keep all of the details up-to-date
It is important to ensure that your details in the Designs 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 design
- you grant (or wish to revoke) a licence
- you pledge your design to the bank (or wish to revoke a pledge)
- another party imposes a seizure on your design registration (or wishes to lift it)
- a representative has been changed or appointed (the representative will report this change or appointment).
You may also want to have your registration deleted from the designs register (cancellation). All of these aspects must be correctly recorded in the Designs Register for you to be able to invoke your rights.
Which modifications are not possible?
- The design itself can never be modified
- It is only possible to modify design registrations, not applications.
Renew design registration
A design registration remains valid for five years from the date on which the application was filed (filing date). The registration can be extended by five-year periods (renewal), up to a maximum of 25 years. This is provided by law. A fee is charged to renew your design registration. View the Fees
How do I renew my registration?
You must renew your design registration on time. We will send you a renewal notice six months before the expiry date 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.
A surcharge applies to renewing after the expiry date.
Keeping details up-to-date
Make sure that your details are up-to-date before you renew your design registration. It is not possible to modify the details during the renewal procedure. To report modifications, see the tab 'Modify design'.
Action against design infringement
What should I do if someone infringes my design right?
There are two conceivable situations:
- You have seen a conflicting, possibly infringing, design in the Benelux Designs Register
- You have discovered on the internet or elsewhere a conflicting design that is not listed in the Designs Register.
In either case, you can present your design registration to a court of law. If the court rules that the design is causing an infringement, it may issue an injunction against the use of the infringing design. As well as the injunction, you can petition the court to order the payment of compensation for damages and surrender of the profits (in the case of wilful infringement) and demand possession of the infringing goods.
In the event of a dispute about who the entitled party is in the first situation, it is also possible for the actual designer to demand possession within five years of the date of the registration being published (action for vindication). For the same reason, the actual designer can demand revocation of the registration and the design right, without any time limit (declaration of revocation). The action for vindication or revocation must be filed at a court of law. The action for vindication must be filed in the BOIP register. However, this amounts to no more than statement of the fact that a legal claim is pending.
If you discover a design infringement, the best course of action is to seek advice from an IP professional. It is advisable to have yourself assisted by an IP professional even if you take any action yourself.