More information on the various aspects of the opposition procedure is provided below.
Once the opposition has been filed, the parties are given a period of two months in which to decide whether they can resolve their differences amongst each other. This is referred to as the cooling off period. That way, the parties have the opportunity to come to a solution without BOIP's intervention.
The cooling off period begins once BOIP has informed both parties in writing about the admissible opposition. The period can be extended by mutual request.
BOIP must be informed in the event that an amicable settlement is reached during the cooling off period, and a portion of the costs will be reimbursed. Of course, parties may also reach an amicable settlement at a later stage.
The opposition proceedings can be suspended before or after commencement.
BOIP can officially suspend the opposition proceedings in the following cases:
- where the opposition is based on an application for a trademark;
- where an action is brought with a view to a declaration of invalidity or revocation;
- in the course of the proceedings for refusal on absolute grounds;
- 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 informs the parties of the suspension and the ground therefor. 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.
Upon joint request
The opposition can also be suspended upon joint request by parties. The jointly requested suspension is for a period of four months and can be repeatedly extended by a period of four months. During the suspension on request, the parties may ask that the suspension be lifted. Such a request must be made jointly and in writing. This is the so-called 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. Suspension may be requested free of charge three times during the cooling off period. As from the fourth request, a fee of 150 euro is payable for each suspension request. Parties may also request a suspension once the proceedings are underway, in which case a fee of 150 euro also applies per four-month period.
The opponent must explain in writing why he believes that the defendant's sign could cause confusion with his trademark. These are his submissions. Of course, the defendant is given the opportunity to respond to the opponent's submissions. At this stage in the proceedings, if the opponent's trademark is more than five years old, the defendant may choose not to respond to the substance of the submissions at that time, but rather to ask the opponent to provide proof of use first.
BOIP only forwards the submissions filed with the notice of opposition to the defendant when the proceedings begin.
If submissions are filed using My BOIP message box, one copy thereof suffices. In the exceptional case that paper documents are filed, all submissions and documents are to be filed in duplicate: one copy for BOIP, and one copy for the other party.
Proof of use
Proof of use refers to documents that demonstrate that the trademark has been used genuinely and therefore has not lapsed. The opponent must prove that the trademark was genuinely used in the five years prior to the filing date or priority date of the trademark against which opposition has been filed and that that use was for the goods and/or services referred to in the opposition.
If the defendant asks the opponent for proof of use, the latter has a period of two months to produce that evidence. The opposition will be terminated if he fails to produce any proof. In the event that he does submit evidence, the defendant has two months to comment on it and, if he so wishes, respond to the opponent’s initial submissions, if he has not already done so.
It is preferred that the proof furnished be limited to paper materials such as packaging, labels, pricelists, catalogues, invoices, photographs and newspaper advertisements. These materials may be filed using My BOIP message box. If you do not yet have a My BOIP account, simply use the contact form on our website. You will receive immediate confirmation of receipt. If the cost of forwarding the paper evidence to the defendant exceeds 25 euro, the opponent will be charged for the amount.
Documents submitted to demonstrate use of a trademark may be submitted in their original language (whatever that might be). However, they will only be considered if BOIP judges that, in light of the reason for their submission, these documents are sufficiently comprehensible.
The BOIP will make a decision as promptly as possible after concluding its examination of the opposition.
Possible final decisions
There are three possible variants as regards the final decision:
- opposition deemed well-founded;
- opposition deemed unfounded;
- opposition partially justified.
If the opposition is deemed well-founded, the opponent wins the case and the contested sign will not be registered. If the opposition is deemed unfounded, the opponent will win the case and the contested sign will be registered.
An opposition is only found to be partially justified where the opposition filed was too broad and BOIP is of the opinion that while there is a likelihood of confusion between the trademark and the sign, this does not apply to part of the goods and/or services specified in the trademark application.
Award of costs
The party against whom the matter is decided will be ordered to pay costs. Costs are established in accordance with the provisions of the Implementing Regulations (IR), i.e. an amount equivalent to the basic fee for filing an opposition: 1.045 euro. If the opposition is granted in part, no costs will be awarded.
The BOIP decision awarding costs is an enforceable order. The decision may be forcibly executed in accordance with the regulations in effect in the State where it is being enforced.
An appeal may be filed against a final decision rendered by the Office within a time limit of two months, taking effect from the date of the decision, with a view to obtaining an order cancelling the Office’s decision (Article 1.15bis BCIP). The competent court of appeal is the Benelux Court of Justice. For more information, please go to http://www.courbenelux.be.
Other possible reasons for termination of the opposition
If one of the minimum requirements is not complied with or not addressed, the opposition is inadmissible, subject to a reason for provisional admissibility. Under Rule 1.21 IR which provides for hearing both sides of the argument, a notification of inadmissibility is sent to both parties, together with a copy of the relevant details.
Incidentally, should the opposition period not yet have expired, the opponent will be offered the opportunity to remedy the deficiencies found, within the opposition period, and the opposition may subsequently be declared admissible.
2. examination abandoned
In a number of instances, examination of the opposition will be abandoned. Unlike in the case of proceedings ending based on a ground for closing proceedings, where fees may be refunded in part, in the case of abandonment of examination no refund will be made. An opposition may be abandoned for one of the following reasons :
- The opponent fails to respond (within the stipulated time limit), further to a notification of admissibility, to regularisation of the opposition;
- The opponent fails to file submissions;
- The opponent fails to pay the second portion of the opposition fee on time.
The parties may jointly, or the opponent may individually, end the opposition at any time during the proceedings and request closure.
Notwithstanding the instance referred to above, Article 2.16(3) BCIP provides an exhaustive list of grounds for closing opposition proceedings. If any of these grounds apply, the proceedings will end and, if applicable, part of the fees paid will be refunded.
An appeal against a final decision of BOIP may be lodged within a period of two months - counting from the decision - in order to obtain its annulment or revision (Article 1.15bis BCIP). The competent court designated by the BCIP is the Benelux Court of Justice. For more information about the lodging of an appeal, the applicable procedural rules, the court registry fee, contact details, etc., see: http://www.courbeneluxhof.be.