Trademark and design registrations require maintenance. It is important that we always have your latest contact details in particular your your postal and e-mail address. It can also be important that you timely extend the storage period of an i-DEPOT.
What do you want to maintain?
The exclusive right to a trademark is conferred once BOIP has registered the trademark application. The registration remains valid for ten years. At the end of the ten years, you can renew the registration.
A trademark registration enables you to take action against competitors who use the trademark without authorisation (counterfeiting and piracy). You can take action against more recent Benelux trademarks as well as against any trademark valid in the Benelux, that includes EU trademarks and international trademarks that are valid in the Benelux.
You will need to maintain the trademark registration in order to maintain the trademark rights. To this end, you are required to use your trademark, keep it up-to-date, and monitor it. You must of course also renew it on time.
Using a trademark
Once the trademark has been registered, you must actually use it. If the trademark is not used for longer than five years, it could be declared to have lapsed (in its entirety or for some of the goods or services).
It is preferable to use a trademark as filed. If your client uses his trademark differently or updates his logo, it is important to consider whether the distinctive character of the trademark has been modified. If the trademark's distinctive character has been changed, use in the modified form will not be construed as use of the registered trademark. If necessary, a new application may be filed.
The Trademarks Register is the official place of publication for Benelux trademarks. You can print free copies by clicking on 'Print'. Most official bodies will accept this copy as proof of an application or registration. If you need an authenticated copy, you can order one, for a fee, from BOIP. Click 'Order' at the bottom of the copy.
It is important to ensure that your details in the Trademarks Register are correct and up-to-date. If any changes are made, you can ask BOIP to modify the registration details.
- You can submit a change of name and/or address via My BOIP.
- You can submit a designation or change of authorized representative via My BOIP.
Attention: the new representative has to submit the modification!
- You can submit a transfer of a trademark via My BOIP.
Which changes are not possible?
- The trademark itself can never be modified;
- The goods and services specified can never be extended (but may be limited);
- A collective or certification trademark can never be converted into an individual trademark (or vice versa).
A trademark registration is valid for ten years, running from the filing date. The registration can be renewed for ten-year periods an unlimited number of times. That implies that a trademark can be protected forever.
In such a case, you will however need to renew the registration repeatedly. We will send a reminder message. To this end, it is important that your contact details are up to date, in particular your postal and e-mail address. Failure to receive a message from us for any reason does not render BOIP in any way liable. Timely renewal of your registration is your own responsibility. For this reason, be sure to inform us of any changes in your postal or e-mail address in good time.
How do I go about renewal?
You can renew a trademark registration from six months before the expiry date of the trademark up to six months after the expiry date. Renewal after the expiry date is subject to a statutory surcharge of 135 euro over and above the renewal fee. View the Fees
Once the six-month period after the expiry date has passed, it is no longer possible to renew the trademark. In such a case, you will need to apply for a new trademark registration.
Monitoring the trademark
To maintain your client's trademark in an effective fashion, it is advisable to constantly monitor whether infringing trademarks are being filed or used. You can do this by perusing the 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.
It is also worth doing an online search from time to time in order to check whether your trademark is being used by others.
Do your services include investigating and monitoring trademarks? Are you responsible for examining or monitoring your own trademark portfolio? BOIP will be happy to support you with the Datolite service. More information about Datolite
The cancellation procedure, officially known as the invalidation or revocation procedure at BOIP, is a simple, fast administrative procedure by which a registered trademark can be cancelled. The holder of an IP right may apply to have a more recent trademark cancelled because it conflicts with his or her pre-existing IP right. Cancellation of a trademark may also be requested based on absolute grounds or because the trademark is not being used.
Article 2.30bis of the Benelux Convention on Intellectual Property (BCIP) provides the basis for the cancellation procedure.
If you discover that an application has been filed to register a sign that infringes your trademark, you can file an opposition with BOIP or take legal action through the courts based on your pre-existing IP rights.
By means of an opposition procedure, you can oppose the registration of a more recent trademark and, so, resolve a potential dispute without going to court. More about Opposition
You can also go to court to seek an injunction against use of the infringing trademark and indeed possibly for seizure of goods, payment of damages and even surrender of profits (in the case of wilful infringement). Deliberate forgery of or trading in counterfeited trademarks or trademarked goods is a criminal offence.
There is usually a time limit for taking action against infringement of a trademark. Opposition may only be filed within two months of publication of the trademark. In the case of Benelux trademarks, at the bottom of the entry in the Trademarks Register it is stated whether opposition is still possible. If so, the opposition period is also stated.
If you tolerate the use or registration of a more recently registered trademark for more than five years, it will generally not be possible to take action against that trademark at a later date.