Legal grounds for refusals

Below you will find the relevant legal provisions from the Benelux Convention on Intellectual Property (BCIP) regarding refusals on absolute grounds.

Graphic representation of a sign (art. 2.11, par. 1, sub a, i.c.w. art. 2.1, par. 1, BCIP)

Article 2.11, paragraph 1, sub a, BCIP is the 'first stage' of the examination on absolute grounds. It refers to article 2.1, paragraph 1, BCIP, which defines the signs that can be filed. These signs must be graphically represented and must serve to distinguish the goods or services as originating from a specific undertaking. This ground for refusal will often apply to applications for signs that cannot be described as 'traditional trademarks'.

Exclusion of three-dimensional trademarks (art. 2.11, par. 1, sub a, i.c.w. art. 2.1, par. 2, BCIP)

Article 2.11, paragraph 1, sub a, BCIP also forms the basis for the refusal of a number of categories of three-dimensional trademarks, namely the three-dimensional trademarks described in article 2.1, paragraph 2, BCIP: shapes which either (1) result from the nature of the goods or (2) give a substantial value to the goods or (3) are necessary to obtain a technical result.

These grounds for exclusion are absolute. They are motivated by the desire to prevent the award of a trademark right (which in principle is perpetual) having the effect of handing the holder of that right a monopoly for which other forms of protection with a limited duration (patent, design, copyright) are intended. The trademark right is not intended to extend the duration of lapsed statutory monopolies.

If one of these grounds for exclusion applies, the sign cannot be registered because it has acquired distinctiveness as a result of the use that has been made of it.

Lack of distinctive character (art. 2.11, par. 1, sub b, BCIP)

Article 2.11, paragraph 1, sub b, BCIP states that signs that are devoid of any distinctive character must be refused. The motivation for this has to do with the essential function of a trademark and the public interest associated with it. In other words, the consumer or end user must be able to identify the origin of the goods or services to which the trademark refers such that he can distinguish them without any risk of confusion from goods or services which have another origin.

Article 2.11, paragraph 1, sub b, BCIP is an ‘umbrella provision’. Signs that must be refused by virtue of the criteria of article 2.11, paragraphs 1, sub c and sub d, also fall under the criterion of article 2.11, paragraph 1, sub b. Descriptive (c) and customary (d) designations lack distinctive character by definition. However, the opposite is not always the case: even if a sign is not descriptive or does not constitute a customary designation, it does not necessarily follow at all that it possesses distinctive character. Thus article 2.11, paragraph 1, sub b, also constitutes an independent ground for refusal.

Descriptive signs (art. 2.11, par. 1, sub c, BCIP)

Article 2.11, paragraph 1, sub c, BCIP sets out the ground for refusal of descriptive signs. BOIP must refuse applications for trademarks that consist exclusively of signs or designations that may serve to designate characteristics of the goods or services indicated in the application.

Thus it is essential to assess whether a sign, or part thereof, may serve to designate characteristics of the goods and services in question, without necessarily considering whether (1) there are synonyms for the designation, (2) the sign only describes less essential, or commercially less essential, characteristics of the goods or services, (3) there are more usual designations or ones that are more immediately descriptive, or (4) the sign may also have other meanings. Furthermore, the assessment must also look to the future: BOIP must consider whether the filed designation could in the future be descriptive of the goods or services concerned.

Customary designations (art. 2.11, par. 1, sub d, BCIP)

Article 2.11, paragraph 1, sub d, BCIP requires BOIP to refuse a sign if, in common parlance or in commercial circles, it has become a customary designation for the goods and services in question. BOIP takes the view that a sign will rarely be refused on the basis of (d) if (c) does not also apply. Paragraph 1, sub d provides grounds for refusal of signs that may well have been new designations at an earlier stage but, through use, have become a customary designation for the goods or services in question. If so, they would appear to also be covered by article 2.11, paragraph 1, sub c, BCIP.

Other grounds (art. 2.11, par. 1, sub e, i.c.w. art. 2.4, sub a, b and g, BCIP)

1. Morality and public policy

BOIP must refuse applications that are contrary to accepted principles of morality or to public policy, for instance offensive, racist or sexist signs.

2. Article 6ter of the Paris Convention

Article 6ter of the Paris Convention refers to flags, armorial bearings and other official emblems belonging to states or international organisations. A trademark that incorporates this kind of sign may only be entered in the Benelux register with the consent of the state or organisation in question. In practice, this ground is mostly applied to applications for trademarks that include the flag of the European Union, or parts thereof.

3. Deception

If a sign containing indications of goods or services, or their characteristics, is filed for other goods or services in respect of which use of the sign is liable to deceive the public, the trademark will be refused in whole or part.

4. Protected indications of geographical origin for wines and spirits

On the basis of article 23 of the TRIPS agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights), BOIP must refuse trademarks that contain indications of the origin of wines and spirits that do not originate from the place indicated in the trademark. However, it is not obliged to refuse a trademark, if the application was made by an applicant in good faith, at a time when the geographical indication in question was not protected in the country involved or in the Community. When performing the absolute grounds examination, BOIP assumes that the applicant is acting in good faith.