More information on the different aspects of the cancellation procedure is given below.
The cancellation procedure may be suspended.
BOIP can officially suspend the opposition proceedings in the following cases:
- If the claim is based on a trademark application;
- If an action for invalidation or revocation is brought against a trademark;
- if BOIP considers this necessary. This may arise if proceedings relevant to the trademarks in question are pending before the court and may have an impact on the BOIP case in question.
BOIP will notify the parties of the suspension, stating the grounds for it. The proceedings will resume if the grounds for suspension are removed. BOIP will inform the parties accordingly and stipulate the steps that they should take. If necessary, an adjustment period will be set accordingly.
On joint request
The parties themselves may also jointly request suspension of the procedure. This suspension is for a period of four months and may be renewed by further periods of four months. During a suspension, the parties may at any time - jointly and always in writing - request that the suspension be lifted. This is referred to as the suspension opt-out.
There are no costs associated with a suspension on BOIP's own initiative. There may however be costs associated with a jointly requested suspension. The first three successive suspensions by the parties are free of charge. After this third suspension, i.e. from the fourth request for suspension, a fee of 150 euros is payable for each suspension.
Each applicant must explain in writing why he considers that the grounds for cancellation invoked apply to the contested trademark. The defendant will of course be given the opportunity to respond to the petitioner's arguments. At this stage, if the applicant's trademark is more than five years old, the defendant may also decide not to respond yet to the substance of the submissions, but first to ask the applicant for proof of use.
If the request for cancellation is based exclusively on non-use of the contested trademark, the situation is somewhat different. In that case, the defendant will have to take the initiative and provide evidence of use. The applicant may respond, after which the defendant is given the last word.
BOIP will not forward the arguments entered at the time of submission to the defendant until the start of the procedure.
All arguments and documents must be submitted in duplicate, one copy being for BOIP and the other for the other party. A single copy is sufficient only if the arguments and documents are submitted electronically using the contact form.
Proof of use
Proof of use consists in materials that show that the trademark has been put to genuine use and therefore has not lapsed. In cancellation proceedings, the applicant or the defendant may have to prove that the trademark was put to genuine use for the contested goods and/or services in the five years prior to the application for cancellation being filed and the five years prior to the filing date or priority date of the more recent trademark.
If the defendant requests that the applicant furnish proof of use, the latter has a period of two months to submit such proof. If he or she fails to submit any evidence, the cancellation proceedings will be terminated. In the event that he or she does submit materials, the defendant has two months to comment on them and, in the event that he or she has not already done so, to respond to the applicant’s initial submissions.
If the application for cancellation is exclusively based on an alleged failure to put the contested trademark to genuine use, the trademark holder is accorded a period of two months to prove that the trademark was indeed put to genuine use. Should he or she fail to do so, the trademark will be cancelled. Should he or she furnish the necessary proof, the applicant will be accorded two months to comment on it and, subsequently, the defendant will be accorded two months to file his final submissions.
It is preferred that the proof furnished be limited to paper materials such as packaging, labels, price lists, catalogues, invoices, photographs and newspaper advertisements. If the cost of forwarding these materials to the defendant exceeds 25 euro, the applicant will be charged accordingly.
Materials submitted to demonstrate use of a trademark may be submitted in their original language (whatever that might be). However, they will only be taken into consideration if BOIP deems that, in light of the reason for their submission, they are sufficiently comprehensible.
BOIP will take a decision as soon as possible after the request for cancellation has been examined.
Possible final decisions
There are three possible variants of this final decision:
- application deemed fully well-founded
- application deemed fully unfounded
- application deemed partially well-founded.
If the application is deemed fully well-founded, the applicant wins the case and contested trademark is struck from the register. In the event of a total rejection, the defendant wins the case and the contested trademark remains in the register.
The application is deemed partially well-founded if the request for cancellation was too broadly formulated and BOIP therefore considers that, although there is a case of revocation or invalidity, that is not the case for some of the goods or services covered by the contested trademark.
Award of costs
The unsuccessful party is ordered to pay the costs. The costs are determined in accordance with the provisions of the Implementing Regulations (IR) i.e. an amount equal to the basic fee for filing a cancellation request: 1.420 euros. The costs are not awarded if the cancellation is partially granted.
BOIP's decision awarding costs is an enforceable order. It will be enforced in accordance with the rules in the State in which enforcement is sought.
An appeal against the final decision may be lodged with the Benelux Court of Justice within two months from the date of the decision (article 1.15bis BCIP).
Other possible reasons for terminating the procedure
If one of the minimum requirements is missing or incorrect, the cancellation is inadmissible unless there is a reason for provisional admissibility. Under Rule 1.21 of the IR on the adversarial principle, a notice of inadmissibility is sent to both parties, accompanied by a copy of the relevant information.
Since there is no time limit for initiating a cancellation procedure, the applicant always has the opportunity to submit a new claim and this can still be declared admissible.
2. setting aside an application
In a number of cases, the cancellation procedure is set aside. Unlike the grounds for closing the procedure, in which case some of the paid fees may be refunded, no refund is given if the procedure is set aside. The following reasons for setting aside the procedure are given:
- the applicant does not respond or respond in time to the postponement of the application at the time of the admissibility notification;
- the applicant does not submit any arguments.
At any stage of the proceedings, the parties may jointly, or the applicant separately, terminate the proceedings and request closure.
Except in this case, Article 2.30b(3) of the BCIP provides for an exhaustive list of the grounds for closure of the cancellation procedure. If any of these cases arises, the procedure will end and, where appropriate, part of the fees paid will be refunded. This is the case, inter alia, if the defendant does not respond to the claim. In that case, his trademark registration shall be cancelled.