Protection and maintenance

Trademark and design registrations require maintenance. It is important that we always have your latest contact details. It can also be important that you timely extend the storage period of an i-DEPOT.

What do you want to maintain?

I want to maintain a:

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.

Copies

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.

Modifications

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.
  • Some changes are free of charge. We charge a fee for others. View the Fees
  • For some changes, supporting documents must be submitted via My BOIP or using the contact form.

Would you like to change something in your international trademark registration or application? See International trademark registration.

BOIP checks modifications before they are entered in the Trademarks Register (including verification of the supporting documents, in case of a name change or transfer for instance). You must submit the modification request via My BOIP or by using the contact form. Once we have received payment, if applicable, and have authorised the modification, the modified data will appear in the Register upon publication.

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 trademark can never be converted into an individual trademark (or vice versa).

How do I submit modifications?

The table below sets out how to submit different types of modification.

Download Explanatory notes - Modifications formSubmit completed modifications form

    Possible modifications

    Free of charge

    Do it yourself or request via My BOIP

    Request using form

    Must first be checked by BOIP

    Change of e-mail and account details

    X

    To My BOIP

     

     

    Name and/or address change in the Register data

    X

    To My BOIP

     

     X

    Change of authorised representative in application phase

     

    Download Modifications form

    X

    Change of authorized representative after registration

        Download Modifications form X

    Change of correspondence address (not the postal address)

    X   Download Modifications form  

    Restriction of goods and services during the application phase

    X   Download Modifications form X

    Restriction of the goods and services after registration

     

     

    Download Modifications form

    X

    Transfer of a trademark

     

     

    Download Modifications form

    X

    Notification of a licence, right of pledge or attachment

     

     

    Download Modifications form

    X

    Cancellation of a licence, right of pledge or attachment

    X   Download Modifications form X

    Withdrawal of a trademark application

     

     

    Download Modifications form

    X

    Cancellation of a trademark registration

     X

     

    Download Modifications form

     X

    Amendment of the regulations governing use and control of a collective trademark

     

    Download Modifications form

    Submit completed modifications form

    Renewal

    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 to the address stated in the Trademarks Register, or to the correspondence address known to us. With this in mind, please notify us of any change of address in a timely fashion. No rights can be derived from a failure to receive this letter for any reason. Timely renewal of your registration is your responsibility alone.

    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 133 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.

    Renew trademark registration directly

    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.

    Datolite

    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

     

    Cancellation

    The cancellation procedure, officially known as the invalidation or revocation procedure, is a simple, fast administrative procedure which allows the cancellation of a registered trademark from the register. The holder of an earlier trademark may object to a more recent trademark that conflicts with his own trademark, but he may also be required to cancel a trademark on absolute grounds or because it is not being used.

    The basis for the cancellation procedure is given in Article 2.30bis of the Benelux Convention on Intellectual Property (BCIP).

    More about the cancellation procedure

    Opposition

    If you discover that an application has been filed for a conflicting sign, you can file an opposition with BOIP or take legal action through the courts based on your pre-existing trademark.

    By means of an opposition procedure, you can oppose the registration of a more recent trademark and, so, resolve a potential trademark dispute without going to court. More about Opposition

    You can also go to court to seek a ban on use of the infringing trademark. This could petition at the same time for the goods to be seized, payment of damages and even surrender of profits (in the case of deliberate infringement). Deliberate forgery of or trading in forged trademarks or trademarked goods is a criminal offence.

    There is usually a time limit for taking action against infringement. Opposition can only be filed for a period of two months from the publication of the trademark. In the case of Benelux trademarks, the caption at the bottom of the Trademarks Register shows 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.

    Useful links