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.

Representation of a sign (art. 2.11(1) in conjunction with art. 2.2bis(1)(a) BCIP)

The grounds set out in article 2.2bis(1)(a) BCIP constitute the first stage of the examination on absolute grounds. Article 2.1 defines the signs that may constitute a trademark as well as the conditions to be met by the application in order for these signs to be protected as trademarks. These signs must be represented in such a way that BOIP and all users can clearly ascertain what protection has been granted. For this reason, the BOIP online software application only allows a limited number of file formats to be attached when certain types of trademark application are being filed.

Lack of distinctive character (art. 2.11(1) in conjunction with art. 2.2bis(1)(b) BCIP)

Article 2.2bis(1)(b) BCIP states that signs that are devoid of any distinctive character must be refused. The rationale of this ground lies in the fundamental purpose of a trademark and the associated public interest. The purpose is to ensure that the origin of the goods or services to which the trademark refers can be reliably identified by the consumer or end user, such that he or she can distinguish them with ease from goods or services of a different origin.

Article 2.2bis(1)(b) BCIP is an ‘umbrella provision’. Signs that must be refused pursuant to the criteria of article 2.2bis(1)(c and d) also fall under the criterion of article 2.2bis(1)(b). By definition, descriptive (c) and customary (d) designations lack distinctive character. However, the opposite is not always true: it is certainly not the case that a sign which is not descriptive nor constitutes a customary designation necessarily possesses distinctive character. Thus, article 2.2bis(1)(b) also constitutes a ground for refusal in and of itself.

Descriptive signs (art. 2.11(1) in conjunction with art. 2.2bis(1)(c) BCIP)

Article 2.2bis(1)(c) BCIP provides for the refusal of descriptive signs. BOIP must refuse applications for trademarks that consist exclusively of signs or designations which may serve to designate characteristics of the goods or services designated in the application.

It therefore must be assessed 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 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(1) in conjunction with art. 2.2bis(1)(d) BCIP)

Article 2.2bis(1)(d) BCIP requires BOIP to refuse a sign if it has become a customary designation for the goods and services in question in common parlance or in the trade. BOIP takes the view that a sign will rarely be refused on the basis of (d) if (c) does not also apply. Sub-paragraph 1(d) provides for the 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. As such, they appear also to fall under article 2.2bis(1)(c) BCIP.

Grounds for excluding shape marks (art. 2.11(1) in conjunction with art. 2.2bis(1)(e) BCIP)

Article 2.2bis(1)(e) BCIP provides for the refusal of trademarks, the shape or another characteristic of which (1) results from the nature of the designated products or (2) gives substantial value to the goods or (3) is necessary to obtain a technical result.

These grounds for exclusion are absolute. They are designed to ensure that, by granting a trademark (which is in principle a right in perpetuum), a monopoly is not de facto conferred on the holder, when in fact other, time-limited forms of protection (patent, design, copyright) are more appropriate. A trademark is not intended to extend the life of an expired legal monopoly.

If one of these grounds for exclusion applies, the sign cannot nonetheless be registered on the basis that it has acquired distinctive character through use.

Other grounds (art. 2.11(1) in conjunction with art. 2.2bis(1)(f-l) BCIP)

1. Morality and public policy

BOIP must refuse to register a sign that is contrary to accepted principles of public order or morality, 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 of states or international organisations. A trademark that incorporates such signs 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 comprising indications concerning certain goods or services, or their characteristics, is filed for other goods or services and so may mislead the public, the trademark will be refused in whole or in part.

4. Protected geographical and plant varieties

Pursuant to article 2.2bis(1)(i, j, k and l) BCIP, BOIP must refuse to register marks that cannot constitute a trademark under European law (Regulation (EEC) No. 2081/92) because they violate protected designations of origin, protected geographical indications or guaranteed traditional specialities or because they consist of or reproduce a protected plant variety denomination. Names protected pursuant to treaties with the European Union or with the Benelux countries may also be relevant in this respect. In examining an application with respect to absolute grounds, BOIP proceeds under the assumption that the applicant is acting in good faith.

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