As previously announced, we are holding three webinars to update you on the latest developments in the field of trademarks in the Benelux from BOIP's perspective. The aim of the webinars is to provide you with useful tips for your practice. Below you will find a summary of each webinar, as well as the recordings.
Update on the BOIP cancellation procedure and the Benelux Court of Justice
25 November 2020
During the first of three webinars, Saskia Smits and Diter Wuytens dove into the subject of cancellations before BOIP as well as the new competency of the Benelux Court of Justice in BOIP’s appeal cases. We were pleased to see so many of you participating in this first webinar.
After a general overview and some interactive polls on the amount of cases, Diter talked about the inner workings of the cancellation procedure, comparing some aspects with the practice of EUIPO and explaining the main differences in the procedure related to the grounds invoked. He finished with some decisions by the Office from which he drew practical lessons for the users. Saskia followed by sharing experiences related to the procedure before the Benelux Court of Justice. This was followed by an in-depth look into some of the most noteworthy cases of the Court on absolute grounds for refusal and opposition.
At the end of the webinar participants were able to ask questions. Most of the questions related to the cancellation procedure, but also the representation before the Benelux Court of Justice was elaborated upon. It was clarified that trademark agents have indeed been allowed to represent their clients before the second chamber of the Benelux Court of Justice. Following questions on the subject, it was confirmed that BOIP is looking into incorporating the cancellation procedure in My BOIP and shares the wish of the participants to elaborate guidelines.
We would like to thank all participants for their active contribution and look forward to meeting you in one of our next webinars.
Should you have any questions regarding the webinar, please do not hesitate and send them to legal@boip.int.
Update on implementation of the TM Package
2 December 2020
In the second webinar, Tomas Westenbroek and Camille Janssen gave an overview of the changes following the implementation of the new trademark legislation (`TM Package´).
Tomas started by giving an overview of the new competencies of the Office regarding plant breeders´ rights and geographical Indications as well as traditional terms for wine and traditional specialities guaranteed. Based on examples from the Office practice, he gave the participants tips and tools on how to correctly examine and assess these rights in relation to trademark applications, allowing IP practitioners and applicants alike to avoid and overcome refusals.
Camille continued by giving a state of play regarding collective and certification marks. He followed by addressing the new types of marks that have been introduced. With the CP11 results in hand (which are yet to be implemented by the Offices), he gave the participants guidance in how the working group on this convergence program proposes to deal with issues regarding priority claims and the distinctive character of these types of marks. He concluded with a subject which is not necessarily related to the new legislation, but is of the utmost importance for the practice of the Office and users, namely a new rule issued by the Director-General setting out requirements for the introduction of supporting documents at the Office.
The participants asked several follow-up questions regarding certification marks and the use of such a mark by the applicant himself, as well as the concept of identity of sound marks when filed through different formats (musical notation in jpeg versus mp3), which would require more elements than the ones mentioned in the Shield Mark-case of the Court of Justice of the EU.
We would like to thank all participants for their active contribution and look forward to meeting you in our third and last webinar, which will be entirely dedicated to BOIP's recently published updated Guidelines on Examination of Absolute grounds.
Should you have any questions regarding the webinar, please do not hesitate and send them to legal@boip.int.
Webinar New BOIP Guidelines on Refusals
9 December 2020
The third webinar was devoted entirely to BOIP’s updated guidelines on the examination of absolute grounds for refusal. After a word of welcome by Hugues Derème, in which he also thanked the BMM for their valuable contribution and input, Pieter Veeze started by outlining the events that led up to the new guidelines. These include not only legislative changes, but also new case law both on a European level and a Benelux level and of course convergence programmes of the European Union Intellectual Property Network in which BOIP participates. Pieter emphasized however, that the work did not stop just there. The legal team took this opportunity to review the guidelines in their entirety. The new document consists now of two parts, the first gives practical guidance on how the procedure works, including some useful tips on how to avoid refusal, while the second serves as a reference document with explanatory notes on the Office’s practice arranged per article.
Eline Schiebroek then touched upon some of the main grounds for refusal. The question put to the audience regarding the distinctive character of a multimedia sign led to a lot of reactions in the chat and later on in the Q&A section. She continued to talk about the differences in consumer perception of different types of trademarks and the case law concerning the distinctive character of these types, like slogans and patterns on a bus. When discussing the ground for refusal related to the descriptive character of a sign, attention was drawn to recent case law of the Benelux Court of Justice regarding the question whether the public should perceive a sign ‘immediately and without further reflection’ as descriptive of a characteristic of the goods or services.
Regarding the ground for refusal related to shapes and other characteristics, the participants learned that - as long as case law is lacking - BOIP will take a conservative approach to the interpretation of the concept ‘other characteristics’. An approach which seems to be merited, as opinions from the participants differed greatly when asked if a certain pattern mark should be refused or not. Eline concluded by talking about the Office’s practice regarding heraldic signs and geographical indications, as well as other agri-related rights which are now grounds for refusal.
The webinar ended, as was the case for the previous webinars, with a lively Q&A session, in which participants shared their views on the distinctive character of the multimedia sign which was shown, but also asked questions about the distinctive character of geographical indications and how this assessment relates to cancellation procedures before the Office.
This third webinar, held on December 9th, 2020, was also the last of this series. We would like to thank all participants for their contribution and highly appreciated involvement. Should you have any questions regarding this webinar or suggestions for topics you would like to see addressed in future webinars, please do not hesitate and send them to legal@boip.int.