The holder of a trademark may only file an opposition against a more recent trademark in the following cases:
- it is alleged that an identical trademark has been filed 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, and the trademark 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 mark within the meaning of Article 6bis of the Paris Convention.
Furthermore, an opposition may be filed against a trademark application in the event that:
e. it is alleged that the trademark application has been filed by a trademark agent or representative who has not been authorised to do so;
f. it is alleged that the trademark application violates others’ rights to protected designations of origin, protected geographical indications or traditional specialities guaranteed. Designations protected pursuant to treaties with the European Union or with the Benelux countries may also be relevant in this respect.
An opposition must meet certain minimum requirements. If it fails to do so, it will be deemed inadmissible and not be examined. If you correct the deficiencies in your opposition before the opposition term expires, the opposition will be deemed admissible.
If you file your opposition online, the software application will check whether it meets the admissibility requirements. That check, however, is not comprehensive.
What are the minimum requirements?
In addition, when filing an opposition, the following must be clearly stated:
1. the identity of the opponent
An opponent can be a natural person or a legal entity. The opponent's particulars must match those of the party entitled to the invoked rights.
If these particulars do not match, BOIP shall, if appropriate, regard the opposition as comprising an implicit request to notify a modification to the record of the invoked right (transfer, name change or licence). A period of two weeks will then be allowed for the modification to be regularised.
If a licensee is acting as the opponent, he or she must obtain authorisation from the holder of the invoked right prior to filing the opposition and, if need be, the licence must be recorded in the register.
2. the IP right invoked as a basis for the opposition
Oppositions are generally prosecuted based on a prior trademark that is 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 opposition or, at the latest, when filing your written submissions.
If the invoked right has not yet been registered, the opposition proceedings will be suspended. On the other hand, if the invoked right has lapsed, BOIP will allow the opponent two weeks to renew his or her trademark, provided that the statutory deadlines still allow for renewal.
Furthermore, opposition may be filed by a party entitled to a protected designation of origin, protected geographical indication or a guaranteed traditional speciality. Lastly, opposition 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.
The opposition 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.
3. the trademark against which the opposition is filed
An opposition may be filed against a Benelux application, an accelerated Benelux registration or an international registration valid in the Benelux, within the time limit set for opposition. The particulars of the trademark applicant (defendant) and of the relevant trademark must be entered on the forms such that the opposed trademark can be identified. If not all the particulars have been provided, but it is sufficiently clear to BOIP against which trademark the opposition has been filed, the opposition will be deemed admissible. If it is insufficiently clear from the forms against which trademark the opposition has been filed, the opposition will be deemed inadmissible.
The opponent may indicate its language preference when submitting the opposition form. This concerns the opponent’s preference for the language of the proceedings on the one hand, and whether the opponent would like a translation if the defendant’s arguments are submitted in a language other than the opponent's preferred language, on the other.
The language of the proceedings can be Dutch, French or English. In general, the language of the proceedings will be the filing language of the defendant’s application. This is the language used for the classification of the application. The defendant, however, can also agree to the language of preference of the opponent. In that case, this language will become the language of the proceedings. An exception to the general rule, that the language of the proceedings is the language of the defendant’s application, is made when the contested application has been filed in English. In that case, the language of the proceedings will be the preferred language of the opponent. English is considered a working language, which implies that neither party can be forced to use English. In the case of international trademarks, the defendant has a period of one month in which to respond to the of language of the proceedings.
The choices made regarding procedural language can be changed prior to the commencement of the procedure by mutual request.
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.
An opposition must be lodged within a specific period of time. This two-month period starts from the publication of the trademark on our website. For international (accelerated) registrations, the deadline is determined by the publication date in the WIPO Gazette of International Marks, on the WIPO website.
For Benelux trademarks, you can find out whether it is still possible to lodge an opposition by looking at the bottom of the copy in the Trademarks register. In that case, the opposition deadline will be posted.
Goods and services
By filing an opposition it is possible to institute an opposition against goods and services of the contested trademark in the following ways:
- you file an opposition against all goods and services, or,
- you file an opposition against a portion of the goods and services:
a) you file an opposition either against a certain number of classes;
b) you provide a specification of the exact goods and services against which you wish to file an opposition.
If you wish to specify the exact goods and services, then you must use the wording that also appears in the register when filling an opposition. BOIP will not make any content-based judgement regarding the accuracy of this information. 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. This is due to the fact that the other party will only be ordered to pay costs if the opposition is deemed justified for all goods and services against which it was filed.
The Similarity tool is a search function for professionals, providing a useful tool during opposition procedures. You can use this tool to determine whether certain goods and services are viewed as similar or not similar.
More than one opposition
More than one opposition may be filed against the same trademark. In this case, BOIP can decide to handle one or more oppositions prior to the start of legal proceedings.
This occurs if the initial investigation identifies an opposition that seems most likely to be awarded. In that case, the other oppositions will be postponed for handling. BOIP informs the other opponents of every relevant decision taken in further proceedings.
If the opposition that was taken up is deemed well-founded and the decision is definitive, the postponed oppositions are considered to have lost their legal ground. Consequently, these will be terminated and part of the costs will be reimbursed. If the opposition that was taken up is deemed unfounded, the next opposition will be handled. If this opposition is deemed well-founded, the remaining postponed oppositions are considered to have lost their legal ground. If unfounded, the next opposition will be taken up in such cases.