Entry into force of the amended BCIP on 1 March 2019

The BCIP will be adapted to the new European Trademark Directive (Directive (2015/2436) on the approximation of the laws of the Member States relating to trademarks). This new step in the harmonisation of trademark law at European level requires several adaptations in the Benelux legislation, which has been formalized in a Protocol to amend the BCIP. This Protocol was signed by the Benelux countries on 11 December 2017.

An important part of the amendments concerns modernisation and simplification of procedures. Examples are:

  • Soon, trademarks can also be represented differently than graphically (for example, sound marks with an MP3 file).
  • The grounds for exclusion and therefore the grounds for opposition and cancellation will be extended and harmonised.
  • The requirement of a clear and precise description of goods and services is codified in accordance with the IP-Translator judgment (ECJ, C 307/10, 19 June 2012).
  • A system for registration of certification marks is being introduced.

In addition, the rights of the trademark holder are strengthened in several respects, but at the same time the limitations and defences are extended. For example, the possibilities for action against the use of a trademark in comparative advertising, against preparatory actions in the event of imminent infringement and against counterfeit goods in transit are laid down.

On the other hand, the possibilities for the defendant to request proof of genuine use are extended, the conditions for referring trademark use are tightened up and action by the trademark holder is henceforth not only excluded against the use of descriptive signs, but also against the use of (otherwise) indiscriminate signs.

The Protocol and the Common Explanatory Memorandum can be found on the website of the General Secretariat of the Benelux. In the meantime, the protocol has been ratified by the three Benelux countries and the adapted BCIP will enter into force on 1 March 2019.

Of course we will provide further information on the practical consequences of the changes for trademark owners.

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