TRADEMARK OPPOSITION BENELUX

Once the trademark is published in the Trademark Journal, opposition to the registration can be filed within two months from the date of publication, as per Article 2.14.

The opposition can be based on one or more earlier rights and can cover all or part of the goods or services protected or applied for by the earlier right. It can also target all or part of the goods or services for which the contested mark is applied.

Chronological order of opposition proceedings in Benelux:

1. Receipt of the electronic forms

   The BOIP examines the accuracy of provided information and checks if it meets the minimum legal requirements as per Section 5 of the Guidelines. The Office will notify the parties accordingly.

2. Cooling-Off Period

   Upon filing an opposition, the parties are given two months to resolve their differences. This period starts from the date BOIP informs them in writing about the admissible opposition. During this time, without BOIP’s assistance, the parties can find a solution. If a settlement is reached within these two months, BOIP should be notified, and a portion of the costs will be reimbursed.

   – Note: Parties can also reach a settlement at later stages.

   Suspension

   According to Article 2.16(2), proceedings can be suspended, either by the BOIP or joint request of parties, at two stages: before or after the opposition proceedings commence. •
   1. By BOIP:
      • If the opposition is based on an earlier trademark application that has not yet been registered.
      • If the earlier mark was registered without delay under Article 2.8(2) and is subject to refusal on absolute grounds or opposition.
      • If the earlier mark or opposed mark is subject to an invalidity or revocation action.
      • When the opposition is based on a mark with a designation of origin or geographical indication until a final decision is taken.

      If the opposed mark is subject to refusal on absolute grounds. BOIP will notify the parties of the suspension and the reasons for it. Proceedings will resume once the reason for suspension is resolved, with BOIP informing the parties and outlining the necessary steps. An adjustment period may be set if needed. 

   2. Upon Joint Request:

      Parties can jointly request a suspension for an initial period of four months, which can be extended repeatedly for additional four-month periods.

      Either party can request to lift the suspension in writing at any time, known as the “suspension opt-out.”

   3. Costs:
      • If BOIP initiates the suspension, there are no costs involved.
      • For joint suspension requests, there are associated costs. During the cooling-off period, the suspension of proceedings can be requested free of charge only three times. On the fourth request, a fee of 150 Euros is required for each request.
      • Parties may also request a suspension once the proceedings are underway, for which a fee of 150 Euros applies per four-month period.
3. Regularization and language preferences

   During the cooling-off period, the regularization and language of proceedings are decided. These processes run concurrently.

4. Commencement of proceedings

   After the cooling-off period ends, BOIP will inform both parties, and the actual opposition proceedings will commence.

5. Exchange of Arguments
   • As per Section 13, the opponent has two months from the commencement of opposition to submit their arguments and supporting documents.
   • Upon receipt of the grounds of opposition, the defendant (the trademark applicant) will have two months to respond. The defendant’s response will be forwarded to the opponent, and both parties will be notified that a decision is pending.
   • During this stage, the defendant can request proof of use either through a separate request or alongside their arguments. The opponent must demonstrate that the trademark was genuinely used in the five years before the filing date or priority date of the trademark against which the opposition has been filed. Additionally, the use must be for the goods and/or services mentioned in the opposition. It is generally recommended that the defendant requests proof of use separately to allow them to submit their arguments alongside their response to the proof of use.
   • BOIP will forward the proof of use request to the opponent, granting them two months to submit the requested proof or substantiate a proper reason for non-use. The defendant will then have two months to respond to the proof submitted by the opponent.
   • If the defendant does not respond to the opposition, the proceedings will be closed.
   • If BOIP deems there are relevant grounds, it may request additional documents from one or more parties within a stipulated time limit, in accordance with the principle of hearing both sides of the argument.
6. Hearing

   A hearing may be held ex-officio or at the parties’ request if the Office deems there are grounds for it. The hearing will proceed according to the regulations set by the DG.

7. Decision

   Once the opposition proceedings are completed, the Office will issue a decision. If the opposition is justified, the Office will refuse the registration of the mark in whole or in part. If it is not justified, the opposition will be rejected.

   • Award of Costs- The losing party will be ordered to pay the costs. No costs will be incurred if the opposition is partially justified. The cost is determined in accordance with the Implementing Regulations, which equals to the basic opposition fee.
   • Possibility of Appeal-An appeal may be lodged with the Benelux Court of Justice within two months from the date of the decision.
   • Joint Request Not to Execute Decision- after the Office reaches a decision and until it becomes final, the parties may file a joint request to the Office to not execute the decision.