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Law Approving The Protocol Amending The Uniform Benelux Law On Trade Marks, Done At Brussels On 11 December 2001 (1)

Original Language Title: Loi portant assentiment au Protocole portant modification de la loi uniforme Benelux sur les marques, fait à Bruxelles le 11 décembre 2001 (1)

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24 DECEMBER 2002. - Act enacting the Protocol amending the Benelux Uniform Act on Marks, done in Brussels on 11 December 2001 (1)



ALBERT II, King of the Belgians,
To all, present and to come, Hi.
The Chambers adopted and We sanction the following:
Article 1er. This Act regulates a matter referred to in Article 77 of the Constitution.
Art. 2. The Protocol amending the Benelux Uniform Trademark Law, done in Brussels on 11 December 2001, will come out its full effect.
Promulgation of this law, let us order that it be clothed with the seal of the State and published by the Belgian Monitor.
Given in Brussels on 24 December 2002.
ALBERT
By the King:
Minister of Foreign Affairs,
L. MICHEL
Minister of Economy,
Ch. PICQUE
Seal of the state seal:
Minister of Justice,
Mr. VERWILGHEN
____
Notes
(1) Session 2001-2002.
Senate.
Documents: Bill, tabled on 30 July 2002, No. 2-1264/1. - Report, no. 2-1264/2.
Annales parlementaire : Discussion, session du 10 octobre 2002. - Vote, meeting of 10 October 2002.
Room.
Documents: Project transmitted by the Senate, No. 50-2072/1. - Text adopted in plenary and subject to Royal Assent, No. 50-2072/2.
Annales parlementaire : Discussion, session de 14 novembre 2002. - Vote, meeting of 14 November 2002.
(2) The belgium deposited its intrument of ratification on 8 January 2003. The protocol has not yet entered into force.

Protocol amending
of the Benelux Uniform Law on Trademarks
The Kingdom of Belgium,
The Grand Duchy of Luxembourg,
The Kingdom of the Netherlands,
Animated by the desire to amend the uniform Benelux law on marks in order to adapt it more literally to the text of the first directive of the Council of the European Communities of 21 December 1988 close the laws of the Member States on marks, to establish an opposition procedure, to establish a register of agents in trademarks and to complete and correct a limited number of provisions,
The following provisions were agreed:
Article 1er
The Benelux Uniform Marking Act is amended to read:
A) Article 1er is replaced by the following provision:
“Article 1er. The names, drawings, prints, stamps, letters, numbers, forms of products or packaging are considered to be individual marks, and any other signs that may have a graphic representation to distinguish products from a company.
However, may not be regarded as marks the signs constituted exclusively by the form that is imposed by the very nature of the product, which gives a substantial value to the product or that is necessary to obtain a technical result. »
B) Section 3 is amended to read:
1. Paragraph 1er, the words "the exclusive right to the mark is acquired by the first deposit made in Benelux territory" are replaced by the words "the exclusive right to the mark is acquired by the registration of the mark, the deposit of which was made in Benelux territory (Benelux deposit)".
2. In paragraph 2, subparagraph (b), the words "when there is a risk of association between the marks in the public mind" are replaced by the words "when there is a risk of confusion in the public mind that includes the risk of association with the previous mark".
3. In paragraph 2, subparagraph c , the words "kan worden getrokken" are replaced by the words "wordt getrokken", and the words "kan worden gedaan" by the words "wordt gedaan".
(C) Section 4 is replaced by the following provision:
“Article 4. Within the limits of 6bis , 6ter , 6quater , 6sexies , 6ssepties and 14, is not attributable to the right to the mark :
1. the registration of a mark that, regardless of its use, is contrary to the good morals or public order of one of the Benelux countries or whose refusal or invalidation is provided for in Article 6ter of the Paris Convention;
2. the registration of a mark that is likely to deceive the public, for example on the nature, quality or geographic origin of the product;
3. the registration of a trademark resembling a registered collective mark for similar products, to which was attached a right that was extinguished in the three years preceding the deposit;
4. the registration of a mark resembling an individual mark registered by a third party for similar products and to which was attached a right that, in the two years preceding the deposit, was extinguished by the expiry of the registration, unless there was consent of that third party or default of use of that mark, as provided for in Article 5, paragraph 2, sub-a;
5. the registration of a mark likely to create confusion with a well-known mark, within the meaning of Article 6bis of the Paris Convention; and a third party that is not consenting;
6. the registration of a trademark whose deposit was made in bad faith, including:
a. the knowledge or inexcusable ignorance of normal use made in good faith in the last three years, in Benelux territory, of a similar mark for similar products, by a third party that is not consenting;
b. the deposit, made in knowledge, resulting from direct relations, of the normal use made in good faith by a third party in the last three years outside the Benelux territory, of a similar mark for similar products, unless there is consent of that third party or that such knowledge was acquired only after the beginning of use. that the holder of the deposit would have made the mark on Benelux territory;
7. the registration of a mark for wines that contains a geographical indication identifying the wines or that is constituted by such an indication, or the registration of a mark for spirits that contains a geographical indication identifying the spirits or that is constituted by such an indication, with respect to the wines or spirits that do not have that origin, unless the deposit that led to that record was made in good faith before:
a. the entry into force of this provision; or
b. the beginning of the protection of the said geographical indication in the country of origin or in the Community. »
D) Section 5 is amended to read:
1. Paragraph 1er, under a , the words "of Benelux deposit" are replaced by the words "of the mark".
2. Paragraph 2 is replaced by the following paragraph:
“2. The right to the mark is declared extinguished within the limits set out in section 14, sub C, to the extent that after the date of registration:
a. there was, without just cause, no normal use of the mark on the Benelux territory for the products for which the mark is registered, for one, uninterrupted period of five years; in the event of a dispute, the court may put, in whole or in part, the burden of proof to the holder of the mark;
b. the mark has become, by virtue of the activity or inactivity of its holder, the usual designation in the trade of a product for which it is registered;
c. the mark, as a result of the use that is made known to it, or with its consent, for the products for which it is registered, is likely to mislead the public, including the nature, quality or geographic origin of these products. »
3. In paragraph 3, subparagraph (a), the word "kenmerk" is replaced by the word " vermogen".
E) Section 6 is amended to read:
1. Paragraph A is supplemented by paragraph 5, which reads as follows:
« 5. The Bureau publishes the filing, in accordance with the provisions of the Implementing Regulations, when the conditions for the fixing of a filing date have been met and the products mentioned have been classified in accordance with the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks.
2. In paragraph C the words "Without prejudice to the application of section 6bis" are replaced by the words "Without prejudice to the application of sections 6bis, 6quater and 6sexies".
3. After paragraph D is inserted a paragraph E , which reads as follows:
"E. If the applicant is satisfied with all the conditions referred to in this section, the applicant may request the Bureau in accordance with the provisions of the Implementing Regulations to proceed without delay to the registration of the filing. Sections 6bis , 6ter , 6quater , 6sexies and 6ssepties apply to the trademarks so registered, provided that the Benelux Office is empowered to decide to delete the registration and that the holder of the mark may apply for the maintenance of the registration. »
F) Section 6bis is amended to read:
1. Paragraph 1er is replaced by the following paragraph:
“1. The Benelux Office refuses to register a mark when it considers that:
a. the sign cannot constitute a mark within the meaning of Article 1er;
b. the mark has no distinctive character;
c. the mark is composed exclusively of signs or indications that can be used, in trade, to designate the species, the quality, quantity, destination, value, geographical origin or time of the production of the product, or other characteristics of the product;
d. the brand is composed exclusively of signs or indications that have become common in the current language or in the loyal and constant habits of trade;
e. the mark is a mark referred to in section 4, under 1, 2 or 7. »
2. In paragraph 4, the words "registration of the deposit" are replaced by the words "registration of the mark".
3. Paragraph 4 is supplemented by the following provision: "The refusal becomes final only when the decision is no longer subject to appeal or, where applicable, the decision of the appeal court is no longer subject to appeal. »
4. Paragraph 5 is repealed.
G) Section 6ter is replaced by the following provision:
“Article 6ter. 1. The applicant may, within two months of the communication referred to in Article 6bis, paragraph 4, file an application with the Court of Appeal of Brussels, the Gerechtshof of The Hague or the Luxembourg Court of Appeal for an order to register the mark.
2. As part of this procedure, the Benelux Bureau of the Marques may be represented by the Director or a staff member delegated by him.
3. The Territorially Competent Court shall be determined by the applicant's address, the agent's address or the postal address mentioned at the filing. If neither the applicant nor his agent has an address or a postal address on Benelux territory, the competent court is the address chosen by the applicant.
4. The decision of the appeal court is subject to a cassation appeal, which is suspensive. "
H) Items 6quater, 6quinquies, 6sexies and 6ssepties are inserted as follows:
“Article 6quater. 1. The applicant or holder of an earlier trademark may, within two months of the first day of the month following the publication of the filing, file a written objection with the Bureau Benelux against a mark that:
- takes place after its own, in accordance with the provisions of Article 3, paragraph 2, sub-a and b, or
- is likely to create confusion with its well-known brand, within the meaning of Article 6bis of the Paris Convention.
2. The Licensee has the same right if authorized by the Licensee.
3. The opposition can be based on one or more previous brands.
4. The opposition is deemed to have been formed only after the payment of the taxes determined in the Implementing Regulations.
Article 6quinquies. A. Subject to subsection B, no one is required to be represented before the Agency.
B. Without prejudice to the second sentence of paragraph C , natural and legal persons who have no actual and serious place of residence or industrial or commercial establishment in the European Union or in the European Economic Area must be represented by an agent in the opposition procedure established by articles 6quater and 6sexies .
C. Individuals and legal entities who have their domicile or siege or an effective and serious industrial or commercial establishment in, the European Union or the European Economic Area may act within the framework of the opposition procedure through an employee who must file with the Agency a signed power whose terms are set out in the Implementing Regulations. An employee of a legal entity referred to in this paragraph may also act for other legal persons who are economically related to that person, even if such other legal persons do not have an effective and serious domicile or industrial or commercial establishment in the European Union or in the European Economic Area.
D. In the event of representation, they are allowed to act as an agent:
- a trademark agent registered with the Bureau Benelux;
- a lawyer registered in the Order's table or on the list of trainees of a bar located in Benelux territory or a lawyer authorized to practise in the territory of one of the Member States of the European Union or the European Economic Area and having his professional domicile in the European Union or in the European Economic Area, to the extent that he may act in that State in the context of opposition proceedings;
- a person authorized to act in the context of opposition proceedings before the Office of the Member State of the European Union or the European Economic Area in the territory of which it has its professional domicile or place of employment and which, within the framework of the free provision of services within the European Union or the European Economic Area, is also entitled to act in Benelux territory.
Article 6sexies. A. The Benelux Bureau treats the opposition within a reasonable time in accordance with the provisions set out in the Implementing Regulations and respects the principle of the contradictory.
B. The opposition proceedings are suspended:
- when the opposition is based on a debranded deposit;
- when an action in nullity or in a loss is initiated;
- during the period of the refusal procedure for absolute reasons;
- on joint request from the parties.
C. The opposition procedure is closed:
- where the opponent has lost quality to act or has not provided within the specified time limit any evidence that the right on his mark cannot be declared extinguished pursuant to Article 5, paragraph 2, sub-a;
- when the defendant does not react to the opposition filed. In this case he is supposed to have waived his rights on the deposit;
- when the opposition became irrelevant, either because it was withdrawn, or because the deposit under opposition became without effect;
- when the previous mark is no longer valid.
In these cases a portion of the taxes paid is returned.
D. After completing the opposition review, the Benelux Bureau will decide as soon as possible. When the opposition is found to be justified, the Bureau refuses to record the brand in whole or in part. Otherwise, the opposition is rejected. The Board's decision becomes final only when it is no longer subject to appeal or, if any, that the decision of the appeal court is no longer subject to appeal.
E. The costs are borne by the succumbing part. They are fixed in accordance with the provisions of the Implementing Regulations. The costs are not due to the partial success of the opposition. The Board ' s decision on costs is binding. Its enforced execution is governed by the rules in force in the State in which it takes place.
Article 6s. 1. The parties may, within two months after it has been decided on the opposition in accordance with (article 6sexies , paragraph D , introduce a request to the Court of Appeal of Brussels, the Gerechtshof of The Hague or the Luxembourg Court of Appeal to obtain an order to cancel the decision of the Bureau.
2. The Territorially Competent Court shall be determined by the defendant's address, the address of the defendant's representative or the postal address, referred to at the filing. If none of these addresses is located in Benelux territory, the Territorially Competent Court shall determine by the address of the opponent or his agent. If neither, the opponent, nor his agent, have an address or a postal address on Benelux territory, the competent court shall be the one chosen by the party making the appeal.
3. The decision of the appeal court is subject to a cassation appeal, which is suspensive. »
I) Section 8 is amended to read:
1. Paragraph 1er, the words "Article 66bis , paragraphs 1er and 2, is applicable" are replaced by the words "Article 6bis, paragraphs 1 and 2, and Article 8bis are applicable".
2. Paragraph 3 is supplemented by the following provision: "If none of these two addresses is on Benelux territory, the competent court shall be the one chosen by the applicant. »
3. Subparagraph 5, after paragraph 4, reads as follows:
« 5. The applicant may request the Bureau, in accordance with the provisions of the Implementing Regulations, to proceed without delay to the registration Sections 6bis , 6ter , 6quater , 6sexies and 6ssepties apply to the trademarks so registered, provided that the Benelux Office is empowered to decide to delete the registration and that the holder of the mark may apply for the maintenance of the registration. »
J) It shall be inserted after section 8, an article 8bis, which reads as follows:
« Article 8bis . 1. For a period of two months from the first day of the month following the publication by the International Bureau, opposition may be made to the Benelux Office against an international deposit whose extension of protection to Benelux territory has been requested. Sections 6quater and 6sexies are applicable.
2. The Benelux Office shall promptly inform and, in writing, the International Bureau of the Opposition introduced while mentioning the provisions of Articles 6quater to 6septics as well as the provisions relating to the Implementing Regulations.
3. The Benelux Office shall promptly and in writing inform the International Bureau of the decision that is no longer subject to appeal and shall state its reasons. »
K) In section 10, the first sentence is replaced by the following provision: "The registration of a mark, which was deposited in Benelux territory (Benelux Deposit), has a duration of 10 years taking place on the date of filing. »
(L) In section 11, under A, the first sentence is replaced by the following provision: "The mark may, regardless of the transfer of all or part of the establishment, be forwarded or licensed, for all or part of the products for which it was filed or registered. »
M) Section 12, under A, is replaced by the following provision:
“A. 1. With the exception of the holder of a well-known mark within the meaning of Article 6bis of the Paris Convention, no one may, irrespective of the nature of the action brought, claim a sign considered to be a mark, within the meaning of Article 1er, except where he may claim the registration of the mark he has filed.
2. Where applicable, the judge shall, on his or her own motion, raise the admissibility.
3. It is covered by the registration of the mark or the renewal made during the proceeding.
4. The holder of the mark may require a reasonable compensation from the person who, during the period between the date of publication of the deposit and the date of registration of the mark, carried out acts as described below in section 13, under A, to the extent that the holder of the mark acquired exclusive rights in that capacity. »
N) Section 13, under A, is amended to read:
1. Paragraph 1er is replaced by the following paragraph:
“1. The registered trademark gives its holder an exclusive right. Without prejudice to the possible application of the common civil liability law, the exclusive right to the trademark allows the licensee to prohibit any third party, in the absence of its consent:
a. to make use in business life, of a sign identical to the mark for products identical to those for which it is registered;
b. to make use in business life, of a sign for which, because of its identity or similarity with your mark and because of the identity or similarity of the products covered by the mark and the sign, there is, in the mind of the public, a risk of confusion that includes the risk of the association between the sign and the mark;
c. to make use in business life, of a sign identical to or similar to the mark for products that are not similar to those for which the mark is registered, when that mark enjoys a fame within Benelux territory and that the use of the sign without fair cause unduly benefits from the distinctive character or reputation of the mark or their damage;
d. make use of a sign for purposes other than that of distinguishing products, where the use of this sign without fair cause unduly benefits from the distinctive character or reputation of the mark or their damage. »
2. Paragraph 3 is repealed.
O) Section 14, under A, is replaced by the following provision:
"A. Any interested person, including the Public Ministry, may invoke nullity;
1. a. the registration of the sign that cannot constitute a mark within the meaning of Article 1er;
b. the registration of the mark that is not distinctive;
c. of the registration of the mark which is composed exclusively of signs or indications that may be used in the trade to designate the species, the quality, quantity, destination, value, geographical origin or time of the production of the product, or other characteristics thereof;
d. the registration of the mark that is composed exclusively of signs or indications that have become common in the current language or in the loyal and constant habits of trade.
e. of the registration of the mark that is not attributable to the right to the mark pursuant to Article 4, sub 1, 2 and 7.
2. of the registration of the mark that is not attributable to the right to the mark pursuant to Article 4, under 3, provided that nullity is invoked within five years from the date of registration.
When the action in nullity is introduced by the Public Ministry, only the courts in Brussels, The Hague and Luxembourg are competent in the above cases. The action brought by the Public Prosecution Service suspends any other action brought on the same basis. »
(P) Section 14, under B, is amended to read:
1. Paragraph 1er, the words "of the deposit that takes place" are replaced by the words "of the registration of the mark whose deposit takes place".
2. In paragraph 2, the first words "of the deposit" are replaced by the words "of the registration of the mark".
3. In paragraph 2, the last words "of the deposit" are replaced by the words "of the date of registration".
4. Paragraph 2 is supplemented by the following provision: "This five-year period does not apply to registrations of trademarks as referred to in the aforementioned provision under 5 that have been filed in bad faith. »
Q) In article 14, under C , paragraph 2, the words "invoking the invalidity of a deposit in accordance with the provision in B , when that deposit was made during" are replaced by the words "invoking the invalidity of the registration of a mark in accordance with the provision in B , when the deposit of that mark was made during".
(R) In Article 14, under D, the words "they shall denounce the deletion of the registration of both the depositions cancelled and those that had given birth to the declared rights extinguished" are replaced by the words "they shall declare the deletion of both the registrations cancelled and the records extinguished".
S) Section 14bis is replaced by the following provision:
« Article 14bis . 1. The holder of an earlier mark that has tolerated the use of a posterior mark registered for a period of five consecutive years in knowledge of that use, shall no longer invoke the nullity of the posterior mark on the basis of its prior right under section 14, under B , paragraph 1eror oppose the use of the posterior mark under Article 13, Subparagraph 1er, under a , b and c , for the products for which this mark has been used, unless the deposit of that posterior mark has been made in bad faith.
2. The tolerance of the use of a registered posterior mark within the meaning of paragraph 1er, does not give the holder of the registered posterior mark the right to oppose the use of the previous mark. »
T) It is inserted after article 14bis , an article 14ter , which reads as follows:
"Article 14ter . The courts may decide that a registered trademark has acquired a distinctive character because of the use that has been made. »
U) In Article 15, under A, the words "of a Benelux deposit" are replaced by the words "of a Benelux mark".
V) In section 16, the words "The cancellation of a deposit" are replaced by the words "The cancellation of a registration".
W) Section 17 is amended to read:
1. In paragraph A, under 2, the words "Benelux deposits" are replaced by the words "Benelux marks".
2. In paragraph A, after the replacement of the item at the end of paragraph 3 by a point-ank, a paragraph 4 is inserted, as follows:
“4. provide to any person upon request information extracted from the register of agents in trademarks as well as the rules relating to the registration of agents in trademarks that are arrested in or under this Act. »
3. After paragraph B, a paragraph C is inserted, which reads as follows:
“C. The data referred to in paragraph A , under 2, may also be published electronically. »
X) In section 23, the words "is not applicable to filing" are replaced by the words "is not applicable to registration".
Y) In section 24, the words "Without prejudice to the application of 6, 6bis and 8" are replaced by the words "Without prejudice to the application of 6, 6bis, 6quater, 6sexties, 8 and 8bis".
Z) Section 27, sub B is amended to read:
1. The words "invoking the nullity of the filing of a collective mark" are replaced by the words "invoking the invalidity of the registration of a collective mark".
2. In the second paragraph, the words "registration of deposits" are replaced by the words "records cancelled".
AA) Article 38 is inserted after the words "of the Paris Convention", the words "of the Agreement establishing the World Trade Organization".
Article II
Further to chapter VII, a chapter VIII is added, which reads as follows:
CHAPTER VIII. - Provisions
concerning the register of trademark agents
Rule 50
1. The Benelux Office shall maintain, in accordance with the provisions set out in the Implementing Regulations, a register of agents by marks to determine who meets the requirements for the exercise of the proxy activity under this Act. The register is made available free of charge to the public.
2. Any person in possession:
a. a degree recognized by the Board of Directors of the Benelux Office or a similar supporting document, or
b. of a certificate issued by the Director of the Benelux Office, which appears to have passed a suitability test, or
c. a derogation from the requirement to produce a document as referred to in a or b , granted by the Director of the Benelux Office, may be registered, at the request of the Director, in the register of trademark agents.
3. The Board of Directors of the Benelux Bureau recognizes a degree as referred to in paragraph 2, subparagraph (a) above, if it considers that the examination conducted by the proceeding that issues the diploma leads to sufficient knowledge of the uniform law and of the main international instruments in the field of trademark law as well as sufficient capacity to apply them.
Rule 51
1. In the event of refusal of registration or derogation or in the event of de-registration in the register, or in the event of refusal of recognition or withdrawal of recognition of a diploma, the interested party may, within two months after the refusal, the said de-registration or withdrawal, file an application to the Court of Appeal of Brussels, the Gerechtshof of The Hague or the Court of Appeal of Luxembourg for a diploma or order
2. Under this procedure; Benelux may be represented by the Director or a staff member delegated by him.
3. The decision of the appeal court is subject to a cassation appeal, which is suspensive.
Rule 52
It is prohibited to persons other than those registered in the register referred to in section 50, paragraph 1erto be known in business life as if they were registered in the aforementioned registry. »
Article III
Section 6quater will be applied progressively by reference to the classification established under the Nice Agreement of 15 June 1967 concerning the international classification of goods and services for the purposes of registration of marks. For a period of no later than one year. as from the date of entry into force of this Act, only deposits relating to goods or services of at least one of the following classes may be objected to: 2, 20 and 27. Eighteen months at the latest after that date, the same applies to the following classes: 6, 8, 13, 15, 17, 19 and 21. No later than three years after that date, the same applies to classes 4, 7, 11, 12; 14, 18, 22-26 and 28-34. Four years after that date, the same applies to other classes. The Board of Directors of the Bureau may decide to shorten the deadlines mentioned above.
Article IV
With respect to the addition of a fifth paragraph to section 6, paragraph A, section 1erunder E is not applicable to deposits made prior to the entry into force of this Protocol. Sections 6quater, 6sexies and 6septics are not applicable to these same deposits.
Article V
Article Ierunder J is not applicable to deposits. International whose filing date is prior to the entry into force of this Protocol.
Article VI
Pursuant to Article 1er, paragraph 2, of the Treaty on the Institution and Status of a Benelux Court of Justice, the provisions of this Protocol shall be designated as legal rules, common for the purposes of chapters III and IV of that Treaty.
Article VII
This Protocol will be ratified. The instruments of ratification shall be deposited with the Government of the Kingdom of Belgium.
Article VIII
Subject to the following paragraph, this Protocol shall enter into force on the first day of the month following the deposit of the third instrument of ratification. Article 1erunder H, with respect to the insertion of a 6quinquies article, and under W, with respect to the addition of a paragraph 4 to Article 17, under A, and Article II come into force on a date fixed by enforcement regulations, a different date that may be arrested for the various provisions.
IN WITNESS WHEREOF the undersigned, duly authorized to do so, have signed this Protocol.
Done in Brussels on 11 December 2001, in three copies, in French and Dutch, both texts being equally authentic.