The Benelux Convention for Intellectual Property has now been brought in line with the EU Trade Marks Directive (EU Directive 2015/2436). Changes apply as from 1 March 2019.
One of the main changes brought by the Directive is that a graphical representation is no longer a requirement for registration. Trademarks can now be represented differently than graphically, which means that registration of less conventional trademarks, such as those consisting of sound, will become easier.
Furthermore, the rights of the trademark holder are strengthened. The Benelux trademark legislation now holds provisions that allow the trademark holder to act against the use of its trademark as part of a trade or company name, as well as against its use in comparative advertising in a manner that is contrary to Directive 2006/114/EC. The trademark holder is also able to prevent its trademark from becoming generic by asking dictionary publishers to mention that a given word is a registered trademark. Also, possibilities are laid down for claims against preparatory actions in the event of imminent infringement and against counterfeit goods in transit.
On the other hand, some requirements for trademark registration have become tighter, and means of defence against trademark holders broader.
The specific requirement for shape marks is extended to other types of trademarks, meaning that a trademark cannot be registered if any characteristic of the sign results from the nature of the goods themselves is necessary to obtain a technical result or gives substantial value to the goods.
Previously, the trademark holder could not take action against the use of descriptive signs. As from 1 March 2019, it is also unable to take action against the use of non-distinctive signs.
Please contact Karel Janssens for further information on this topic and/or for general legal advice relating to Intellectual Property.