New procedural rule for requesting proof of use

News Release Rule DG 13/9/2022

In opposition and cancellation proceedings on relative grounds, the defendant may request the opponent/ applicant to prove genuine use of the invoked trademark, if it is valid for more than five years. Until now, there were no further requirements for this request. This could, for example, be included in the defendant's arguments.

In practice, this sometimes led to misunderstandings. Since BOIP only functions as an intermediary for documents during the administrative phase, such a request was sometimes overlooked and only noticed (much) later. Moreover, in its decision in the ILUNO case, the Benelux Court of Justice ruled that, since no further rules apply to such a request, it is a matter that must be interpreted broadly. Because of this, it has already happened that parties, after having been informed that the administrative phase of an ongoing procedure had been completed, were required to submit proof of use, after which, of course, the defendant could still respond.

There is thus an unclear situation in the procedure, which leads to uncertainty for the parties and for BOIP and, in addition, to possible delays. In order to solve this undesirable situation, a new rule of the Director general has been drawn up. From now on, BOIP will adopt the same approach as EUIPO: requests to submit proof of use of an invoked trademark will only be deemed valid if they are made in a separate document, if their submission is explicitly requested and if the requests are introduced on time. A request for proof of use that is included in, for example, the defendant's arguments is no longer valid in opposition and cancellation proceedings filed after 13 September 2022.

Newsletter for IP professionals Subscribe and stay tuned on our latest news, events and case studies!


Follow us on LinkedIn

News, events and useful tools for IP professionals.

Get 75% of your application fees reimbursed! Read how here.

Read more