Three important changes to Benelux trademark law enter into force today

Trademark
law is facing its most significant reform since the introduction of the unitary EU-wide trademark system back in 1996. This reform does not only bring substantial changes to Community
trademarks, it also impacts owners of national trademarks in the EU. On 1
March 2019 the amended Benelux Convention on Intellectual Property (BCIP)
implementing these new changes into Benelux trademark law, enters into force.
Below we discuss 3 main changes that significantly impact trademark
registration and protection as from 1 March 2019.

A
first important change is the extension of the absolute grounds for
exclusion of 3D or shape trademarks to “other characteristics of the goods”.
Shape marks entail three-dimensional signs, i.e. the shape of a product or the
shape of a package. Required is that the trademarked shape can determine the
origin of the goods. There are however three absolute grounds for exclusion of
shape trademarks, notably when the signs consist exclusively of a shape which
(1) is determined by the nature of the goods, such as the classical example of
banana-shaped boxes for banana’s, (2) is necessary to obtain a technical
result, such as Lego building blocks, or (3) gives a substantial value to the
goods, such as a high chair for children.

Under
the amended BCIP, these grounds for exclusion are extended to “other characteristics
of goods”. Therefore, under the new regime it will be possible to refuse
trademark protection based on this ground of exclusion, even beyond shape. One
hypothetical example of a sign that consists
exclusively of ‘other characteristics’ that give substantial value to the goods
could be a sound mark consisting of a specific sound of a motorbike that may
appeal to a significant part of the relevant public to the extent that it
indeed affects the consumer’s choice of purchase. An olfactory mark consisting
of a smell for a perfume could in turn be an example of a sign that consists
exclusively of ‘other characteristics’ that result from the nature of the
goods.[1]

Secondly,
the amended BCIP no longer contains a requirement of a graphic
representation of a sign in order to qualify for trademark protection. The
requirement of graphic representation of a sign led to a lot of discussion in
relation to less conventional trademarks, such as sounds, smells, holograms,
flavours and colours. For sound marks for example, the discussion arose whether
the requirement of graphic representation was fulfilled when a sound was
registered as a sonogram or on a sound medium such as a MP3 file. The question
of graphic representation arose even more in relation to olfactory- and flavour
marks. Was the description of the smell or flavour sufficient or was it
required that the applicant additionally filed a sample or provided the
chemical formula?

Under
the new regime, the requirement of graphic representation is replaced by a more
flexible requirement that the sign applied for be “capable of distinguishing
the goods or services of one company from those of another company” (the
essential function of a trademark), and “being represented on the register in a
manner which enables the competent authorities and the public to determine the
clear and precise subject matter of the protection afforded to its proprietor”.

Lastly,
the new BCIP introduces the new category of “certification marks”,
thereby amending the already existing category of collective marks.

According to the new BCIP, a certification mark is a sign that guarantees
that the products or services bearing the mark possess certain characteristics
even if they come from different undertakings, such as quality criteria, origin
or production methods. However, unlike “collective marks”, certification marks
cannot serve as an indicator of origin.

Consequently, under the new BCIP most “old” collective marks will now
qualify as certification marks. For both the certification and collective
marks, those characteristics are laid down in the regulation for use of the
mark that must be filed together with the application for such mark.

The “new” collective
trademark that is introduced on 1 March 2019 is a sign that marks the
products or services as coming from a member of an association that owns the
collective trademark. Unlike the certification trademarks and the “old”
collective trademarks that can be owned by any entity, the “new” collective
trademarks must be owned by an association or legal entity under public law.

A transitional arrangement is provided
for the existing “old” collective
trademarks(i.e. filed before 1 March 2019) that
have to be converted. The owners of these
trademarks must specify at the latest upon renewal of the trademark whether
their trademark is a collective or certification mark under the new
legislation.

The three changes
discussed above provide very welcome clarifications to the Benelux trademark
law. Even more importantly, they help to further modernise and fine-tune a
professional trademark system and ensure a more thorough protection for
trademark owners going forward.

[1] EUIPO, Guidelines for Examination of European Union Trade Marks, Part B
Examination, Section 4, Chapter 6, 2017, p. 9.