Guidelines for opposition proceedings

The Guidelines comprise 21 sections spread over four parts: 

  • Part I (Legal Provisions): contains all the relevant provisions from the BCIP and the implementing regulations. Everything is here, providing a clear overview. 
  • Part II (Procedural Aspects): contains detailed explanation of the entire procedure from beginning to end, with a separate section for each stage of the proceedings (Sections 4 to 15): from the filing of an opposition to the decision of the Office and the possibility of appeal before the Benelux Court of Justice. 
    Also explained are all the procedural aspects in the preceding stages, such as: admissibility requirements, regularisation, submission of documents, language regime, financial information, time limits, exchange of arguments and possible suspension or termination of the proceedings.  
  • Part III: contains a brief chronological summary of the proceedings.  
  • Part IV: deals with legal grounds and substantive aspects, including, of course, the new grounds for opposition introduced as a result of the Trade Mark Package. This part comprises four sections (Sections 17 to 21) and contains the most notable changes.  

Opposition based on an earlier registered trademark 

The most frequently seen basis for opposition by far is opposition based on an earlier registered trademark. This is therefore the first point of discussion in Section 17. This section deals successively with the legal grounds the opponent may invoke in their arguments: (i) double identity, (ii) likelihood of confusion with identical or similar trademarks and goods or services and (iii) taking unfair advantage of, or being detrimental to, the distinctive character or the repute of an earlier trademark with an existing reputation. We explain the criteria for applying these grounds and the leading case law related to them. 

Proof of use 

In opposition proceedings based on an earlier registered trademark that has been registered for more than 5 years, the opponent must submit proof of genuine use if the defendant requests it. This important means of defence and the criteria applicable to it are discussed in Section 18. You may be interested to read our 5 useful tips about this in our article ‘Usus Magister Est Optimus’. 

Opposition based on a well-known trademark 

Section 19 deals with opposition based on a (unregistered) well-known trademark within the meaning of Article 6bis of the Paris Convention. It focuses in particular on the difference between this ground and invoking the repute or notoriety of an earlier registered trademark. 

Opposition against unauthorised filing by an agent or representative 

Section 20 deals with opposition directed against an unauthorised filing by an agent or representative of the owner of an earlier trademark (normally protected outside the Benelux). This is a new ground and does not arise often. This section discusses the criteria and the relevant case law, which is scarce. 

Oppositions based on protected designation of origin or geographical indication 

Section 21 deals with opposition based on a protected designation of origin or geographical indication. This ground is also a new one, and this section discusses the most important criteria for its application.  

These guidelines are expressly intended to explain BOIP practice and subordinate to the provisions in the BCIP, the IR and the Director General's rules, which prevail at all times.

Download Guidelines opposition (PDF, 594 Kb )

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