Benelux is the union of the countries of Belgium, Netherlands and Luxembourg. In order to register a trademark in any of these countries, the application necessarily has to be done through the Benelux Office for Intellectual Property (BOIP), and therefore protection will be granted in the three member countries.
The members of Benelux are also members of the European Union, thus European Union Trademarks (EUTM) are protected in this jurisdiction.
Benelux is also a member of the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.
Benelux is a “first-to-file” jurisdiction, which means it is necessary to register a trademark to obtain rights over it. However, in exceptional cases, well-known trademarks can be protected even if they have not been filed yet.
It is not necessary for a trademark to have been used in order for it to register. However, previous effective use of the trademark may be useful to help overcome eventual objections raised on the grounds of lack of distinctiveness.
If a trademark has not been used in the five (5) years following its registration, it will become vulnerable to cancellation actions based on non-use of the mark.
Once a trademark application is filed, it will be published in the Trademarks Register for a period of two months during which interested third parties may file oppositions against the trademark application based on their prior rights. At the same time, the BOIP will conduct a substantive examination to determine whether the application complies with the registration requirements.
If you register a combined trademark (which includes both word elements and figurative elements) in Benelux, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
Registered trademarks in Benelux have a validity of ten (10) years from the date of application. It can then be renewed for successive periods of ten (10) years indefinitely. The trademark renewal can be requested as early as six (6) months before the expiration date and as late as six (6) months after it, upon payment of late renewal fees.