On 13 December, BOIP organised a seminar on the 'Trademark Package'. Please find the presentations of the speakers below, as well as a brief report of the seminar.
A video report of the seminar is available in either French or Dutch:
- Opening by Geert Glas, starts at 3:26
- Tineke Van Hoey, starts at 6:27
- Olivier Vrins, starts at 24:05
- Alexander Tsoutsanis, starts at 48:37
- 1st panel discussion, starts at 1:18:15
- Ellen Gevers, starts at 1:36:46
- Bas Kist, starts at 1:57:30
- Diter Wuytens, starts at 2:18:12
- 2nd panel discussion, starts at 2:39:20
- Conclusions by Geert Glas, starts at 2:59:13
- Closure by Hugues Derème, starts at 3:03:53
Review of the seminar held on 13 December
On Thursday 13 December BOIP held a seminar on the 'Trademark Package'. Over a hundred people attended the seminar.
Geert Glas, a lawyer at Allen & Overy, opened the seminar, chair proceedings and stewarded the day's work. The first speaker was Tineke van Hoey, a lawyer at BOIP. She briefed the audience on what will change once the new Trademark Directive enters into force. Olivier Vrins, a lawyer at Altius, then investigated the relationship between trademarks on the one hand and geographical indications and plant varieties on the other. Lastly, Alexander Tsoutsanis, a lawyer at DLA Piper, explained the ins and outs of bad faith, which will be a new issue for BOIP. At the end of the session, there was an open panel discussion, during which participants could debate the topics with the speakers.
After the break, Ellen Gevers, a trademark representative at Knijff, addressed collective and certification marks. She then handed over to Bas Kist, a trademark representative at Chiever, who gave a presentation on the new types of marks. Next up, Diter Wuytens, a lawyer at BOIP, walked the audience through the practical aspects of the planned changes. The floor was then opened for an interactive discussion between this second panel of speakers and the audience. Finally, Geert Glas wrapped the session up with a summary of the takeaways of the day.
The speakers' presentations can be downloaded using the links below.
The BCIP will be adapted to the new European Trademark Directive (Directive (2015/2436) on the approximation of the laws of the Member States relating to trademarks). This new step in the harmonisation of trademark law at European level requires several adaptations in the Benelux legislation, which has been formalized in a Protocol to amend the BCIP. This Protocol was signed by the Benelux countries on 11 December 2017.
An important part of the amendments concerns modernisation and simplification of procedures. Examples are:
- Soon, trademarks can also be represented differently than graphically (for example, sound marks with an MP3 file).
- The grounds for exclusion and therefore the grounds for opposition and cancellation will be extended and harmonised.
- The requirement of a clear and precise description of goods and services is codified in accordance with the IP-Translator judgment (ECJ, C 307/10, 19 June 2012).
- A system for registration of certification marks is being introduced.
In addition, the rights of the trademark holder are strengthened in several respects, but at the same time the limitations and defences are extended. For example, the possibilities for action against the use of a trademark in comparative advertising, against preparatory actions in the event of imminent infringement and against counterfeit goods in transit are laid down.
On the other hand, the possibilities for the defendant to request proof of genuine use are extended, the conditions for referring trademark use are tightened up and action by the trademark holder is henceforth not only excluded against the use of descriptive signs, but also against the use of (otherwise) indiscriminate signs.
The Protocol and the Common Explanatory Memorandum can be found on the website of the General Secretariat of the Benelux. In the meantime, the protocol has been ratified by the three Benelux countries and the adapted BCIP will enter into force on 1 March 2019.
Of course we will provide further information on the practical consequences of the changes for trademark owners.
In case you have any questions on the Trademark Package, please do not hesitate to contact us via firstname.lastname@example.org.