Legal Alert

Baker & McKenzie

Leidseplein 29
1017 PS Amsterdam
P.O. Box 2720
1000 CS Amsterdam
The Netherlands
www.bakernet.com

Tel: +31 (0)20 551 75 55

Fax: +31 (0)20 626 79 49

Opposition Procedure introduced in the

Benelux
On 1 January 2004 the Benelux countries will finally have a separate opposition procedure,
which will allow trademark owners to oppose an application for registration of a conflicting
sign with the Benelux Trademarks Office at an early stage. Until 1 January, trademark
owners could only oppose an application through the courts.

Belgium, the Netherlands and Luxembourg have had uniform trademark protection laws
since 1971. The Protocol amending the Implementing Regulations for the Uniform Benelux
Act (Protocol tot aanpassing van het Uitvoeringsreglement van de Eenvormige Beneluxwet)
will apply to trademarks from 1 January 2004. The opposition procedure will be
incorporated in Benelux trademark law with the introduction of the amended regulations.

Goal
The goal of the opposition procedure is to obtain clarity at an early stage about whether a
trademark can be registered. Trademark owners will have a fast and simple administrative
procedure at their disposal for opposing the registration of younger marks that conflict with
their own marks. The opposition procedure offers trademark owners the opportunity to
resolve conflicts quickly and inexpensively. The new rules encourage parties to reach an
amicable settlement whenever possible.

Who may initiate an opposition procedure?

The opposition procedure may be initiated by an applicant or by an owner of an older
trademark. With the trademark owner’s permission, a licensee may also initiate an
opposition procedure. The opposition procedure can be based on a Benelux
application/registration, a European application/registration, an international registration or
on a widely known trademark within the meaning of Article 6bis of the Paris Convention.1

The procedure
After the opposition registration forms are submitted electronically or by post, the opposition
will be tested for allowability. If it is found to be allowable, the parties are given a two-
month cooling-off period in order to attempt to reach a settlement. The parties may request a
two-month extension of the period. If the parties are unable to reach a settlement, the next
step is a written procedure in which both parties are heard. The Benelux Trademarks Office
then takes its decision as soon as possible.

1
Paris Convention for the Protection of Industrial Property (20 March 1883)
Requirements
An opposition is allowable if it meets at least the following four requirements:

• the opposition must be filed within two months after the first day of the month
following the publication of the application;

• the opposition registration form must clearly state which sign is being opposed and
on which sign or signs the opposition is based;

• the sign being opposed must be one that falls under a class to which the opposition
procedure applies (see the next paragraph);

• the official fees for the opposition (EUR 1000) must be paid.

Phased introduction of the procedure

The opposition procedure will be introduced in phases. From 1 January 2004 opposition may
be initiated against applications relating to goods or services that fall under at least one of
the following classes: 2, 20 and 27. After a maximum period of eighteen months, the
following classes will be added to the list: 6, 8, 13, 15, 17, 19 and 21. After a maximum of
three years following the introduction of the opposition procedure the following classes will
be added to the list: 4, 7, 11, 12, 14, 18, 22-26 and 28-34. The remaining classes will be
added in the fourth year after introduction.2

More information
For more information, please contact:

Alexander R.T. Odle

Baker & McKenzie
Leidseplein 29
P.O. Box 2720, 1000 CS
Amsterdam, the Netherlands
Telephone direct: +31 (0)20 551 71 57
Fax number: +31 (0)20 626 79 49
E-mail: alexander.r.t.odle@bakernet.com

Menno Heerma van Voss

Baker & McKenzie
Leidseplein 29
P.O. Box 2720, 1000 CS
Amsterdam, the Netherlands
Telephone direct: +31 (0)20 551 78 21
Fax number: +31 (0)20 626 79 49
E-mail: menno.heerma.van.voss@bakernet.com

2
The Management Board of the Benelux Trademarks Office may decide to accelerate the process.