An application for the cancellation of a registered trademark may be filed by any interested party if it is alleged that:
- the trademark is invalid on absolute grounds;
- the trademark has not been put to genuine use and has been registered for more than five years. A trademark is considered to have been put to genuine use if it is used in the Benelux and if that use is not purely symbolic, i.e. merely with a view to maintaining the right to the trademark.
The holder of a prior trademark may apply to have a more recent trademark cancelled in the following cases:
- it is alleged that the trademarks are identical and have been registered for the same goods or services;
- it is alleged that an identical or similar trademark has been filed for the same or similar goods or services, which is likely to cause confusion on the part of the public owing to possible associations with the older trademark;
- it is alleged that an identical or similar trademark has been filed for other goods or services; that a prior, well-known trademark is in use; and that use of the more recent trademark procures unfair advantage by virtue of the older trademark or is detrimental to the distinctive character of the older trademark;
- it is alleged that the more recent trademark is likely to cause confusion with a well-known trademark within the meaning of Article 6bis of the Paris Convention.
The holder of a prior trademark may apply for a more recent trademark registration to be cancelled if it was filed by the trademark proprietor’s agent or representative in the latter’s name without the authorisation of the trademark proprietor, unless the agent or representative can justify his or her actions.
An application for cancellation can also be filed by holders of designations of origin or geographical indications protected pursuant to EU law or the internal law of one of the Benelux countries, provided that:
- an application for a designation of origin or a geographical indication had already been submitted in accordance with Union legislation or the internal law of one of the Benelux countries prior to the date of application for registration of the trademark or the date of the priority claimed for the application, subject to its subsequent registration;
- that designation of origin or geographical indication confers on the person authorised under the relevant law to exercise the rights arising therefrom the right to prohibit the use of a subsequent trademark.
Lastly, an application for cancellation can also be filed where the application for registration of the trademark was made in bad faith by the applicant.
An application for cancellation must meet certain minimum requirements. If it fails to do so, it will be deemed inadmissible and will not be accepted for processing.
What are the minimum requirements?
The fees must be paid. In addition, at the time of filing, the following must be clearly stated:
1. Who the applicant is
An applicant may be a natural person or a legal entity. If the application is based inter alia on relative grounds, the applicant’s particulars must match those of the party entitled to the invoked rights, as they appear in the register (if applicable).
If these particulars do not match, BOIP will invite the applicant to regularise them in the register before it (BOIP) processes the application.
If a licensee is acting as the applicant, he or she must obtain authorisation from the holder of the invoked right prior to filing the application for cancellation and, if need be, the licence must be recorded in the register.
2. The trademark to be cancelled
An application may be filed to cancel a Benelux registration, a Benelux accelerated registration or an international registration valid in the Benelux. Cancellation of a Benelux application may also be requested, however in that case, the procedure will be suspended until such time as the contested trademark has been registered. The particulars of the trademark holder (the defendant) and of the relevant trademark must be entered on the forms such that the contested trademark can be identified. If not all the particulars have been provided, but it is sufficiently clear to BOIP which trademark is concerned, the application will be deemed admissible. If it is insufficiently clear from the forms against which trademark the application has been filed, it will be deemed inadmissible.
3. The legal grounds underpinning the application
Cancellation may be requested based on the various grounds set out in the BCIP. It may be requested on the ground that the contested trademark falls foul of one of the absolute grounds for invalidity or that it is not being put to genuine use. An application for cancellation may also be based on relative grounds, i.e. based on a conflict with a pre-existing trademark. The applicant must state the legal basis for the application. The form lists all the grounds that BOIP may consider. The applicant specifies the relevant grounds by ticking the corresponding box(es).
An application for cancellation may be based on a combination of grounds. If more than three grounds are invoked, an additional fee is payable for each ground beyond the third.
4. The IP right invoked in support of the application
Cancellation can only be requested on relative grounds based on a pre-existing trademark valid in the territory of the Benelux, be it an application for or an accelerated registration of a Benelux, EU, or international trademark and/or a well-known mark.
In the case of a well-known mark within the meaning of Article 6bis of the Paris Convention, normally you will not have a registration or filing number that is valid in the Benelux.
Well-known marks within the meaning of the Paris Convention are very rare in the Benelux. The Paris Convention bestows trademark rights to parties who are entitled to a very well-known mark that can be interpreted as trademark. A well-known mark is expressly not intended to indicate that your filed or registered trademark has become widely known.
Proof must be submitted to prove that it is a well-known trademark. That evidentiary material may be submitted when filing the application for cancellation or, at the latest, when filing your written submissions.
If the invoked right has not yet been registered, the cancellation proceedings will be suspended. On the other hand, if the invoked right has lapsed, BOIP will allow the applicant two weeks to renew his or her trademark, provided that the statutory deadlines still allow for renewal.
Furthermore, an application for cancellation may be filed by a party entitled to a protected designation of origin, protected geographical indication or a traditional speciality guaranteed or a protected plant variety denomination. Lastly, an application for cancellation may be filed by the holder of a non-Benelux or EU trademark, whose trademark was filed in the Benelux by an agent or representative of the proprietor of the trademark who was unauthorised to do so.
An application for cancellation may also be filed in the event that the trademark application was filed in bad faith.
The application for cancellation may be based on various IP rights. If more than three rights are invoked, an extra fee will be charged for each invoked right beyond the first three.
When submitting the request for cancellation, the claimant may indicate his or her language preferences. These preferences may relate to, on the one hand, a preference for the procedural language. On the other, for example, a translation if the defendant submits his arguments in a language other than the preferred language.
The procedural languages are Dutch, French or English. In principle, the procedural language is the language of the defendant's trademark (i.e. the language in which the classification is drawn up). An exception is made if the language of the defendant's application is English. In this case, the procedural language is the applicant's preferred language. For international trademarks, the defendant is given a period of one month to respond to the procedural language preferences of the claimant.
Documents supporting arguments or proving the use of a trademark may be submitted in their original language (any language). They will be considered only if BOIP judges that these documents are sufficiently intelligible for the purpose of their submission. BOIP will never translate such documents.
Goods and services
There are several ways to claim the cancellation of a trademark:
- You claim the cancellation from the register of all designated goods or services;
- You claim the cancellation of some of the designated goods or services:
- you claim cancellation of a limited number of classes, or
- you provide a specification of the exact goods or services for which you are requesting cancellation.
If you wish to specify the exact goods or services, you must use the wording that also appears in the register when submitting the claim. You may submit a more detailed specification when filing your arguments.
We advise you to be selective in terms of the choice of goods and services you put forward for cancellation. This is due to the fact that the other party will only be ordered to pay costs if the cancellation request is deemed justified for all goods and services against which it was filed.
The Similarity tool is a search function that professionals can use as a tool during the cancellation procedure. You can use this tool to determine whether certain goods and services are viewed as similar or dissimilar. More about Similarity-tool
More than one cancellation procedure
More than one cancellation procedure by different parties may be filed against the same trademark. In this case, BOIP can decide to not yet start treatment of some of these claims.
This will be done if the initial investigation identifies a claim that seems most likely to be awarded. In this case, the other claims are postponed. BOIP informs the other claimants of every relevant decision taken in further proceedings.
If the accepted claim is deemed well-founded and this decision is final, the postponed claims are considered to have lost their legal ground unless one or more of these claims could lead to invalidation while the decision already taken is for revocation. If, certain claims are not accepted for this reason, the corresponding fees are refunded.