Guidelines on the criteria for the examination of trademarks on absolute grounds
(version of 1 January 2009) (English translation)
1)
Introduction
These guidelines contain an explanation of the criteria for examining trademarks on absolute grounds and of
the way in which the Benelux Office for Intellectual Property (hereafter: “BOIP”) applies them in practice. The
principal objective is to inform the user and to increase the predictability of the decisions taken by the BOIP.
Since the previous guidelines (September 2004), the necessary legal precedents have again been set at
both European and Benelux levels. Although these have not given rise to any radical amendments to
content, it was still time the guidelines were updated. There is also the fact that the old guidelines still
referred to the old provisions of the Uniform Benelux Law on Marks (hereafter: “BLM”) instead of to the
current provisions (incidentally, with likewise little change in content) of the Benelux Convention on
Intellectual Property (hereafter: “BCIP”) and to the old Benelux Trademarks Office (hereafter: “BTO”) instead
of to the current BOIP.
The structure of these guidelines has been kept as similar as possible to that of the previous version to
make it easier for the informed user to find his way around them. All case law referred to is listed in point 18.
2)
Legal provisions
The relevant articles of the BCIP read as follows:
Article 2.1 – Signs that may constitute a Benelux trademark
1. The names, drawings, imprints, stamps, letters, numerals, shapes of goods or packaging and all other
signs that can be represented graphically and that serve to distinguish the goods or services of an
undertaking shall be considered as being individual trademarks.
2. However, signs consisting solely of a shape which results from the nature of the goods, which gives a
substantial value to the goods or which is necessary to obtain a technical result cannot be considered as
being trademarks.
(...)
Article 2.4 – Restrictions
No right in a trademark shall be acquired by the following:
a. the registration of a trademark which, irrespective of the use being made thereof, is contrary to accepted
principles of morality or to public policy in one of the Benelux countries, or in respect of which article 6ter of
the Paris Convention provides for refusal or invalidation;
b. the registration of a trademark which is of such a nature as to deceive the public, for instance with regard
to the nature, quality or geographical origin of the goods or services;
(...)
g. the registration of trademarks for wines containing geographical indications to designate wines or that
consist of such indications, or the registration of trademarks for spirits containing geographical indications to
designate spirits or that consist of such indications in respect of wines or spirits that do not have such origin,
unless the filing that led to such registration was made in good faith before 1 January 2000 or before the
geographical indication concerned was protected in the country of origin or in the Community.
Article 2.8 – Registration
1. Without prejudice to the application of Articles 2.11, 2.14 and 2.16, the filed trademark is registered for the
goods or services indicated by the applicant if the requirements set out in the implementing regulations are
met. The trademark holder is issued with a certificate of registration.
2. If all the requirements referred to in Article 2.5 have been met, the applicant may request the Office to
proceed with the registration of the trademark without delay in accordance with the provisions of the
implementing regulations. Articles 2.11, 2.12, 2.14, 2.16 and 2.17 apply to trademarks registered like this, on
the understanding that the Office is authorised to decide to cancel the registration and the trademark holder
can appeal for the registration to be upheld.
Article 2.11 – Refusal on absolute grounds
1. The Office shall refuse to register a trademark if, in its opinion:
a. the sign cannot constitute a trademark pursuant to Article 2.1 (1) and (2);
b. the trademark is devoid of any distinctive character;
c. the trademark consists exclusively of signs or indications which may serve, in trade, to designate the kind,
quality, quantity, intended purpose, value, geographical origin or time of production of the goods or
performance of the service, or other characteristics of the goods or services;
d. the trademark consists exclusively of signs or indications which have become customary in the current
language or in the bona fide and established practices of the trade;
e. it is a trademark as referred to in Article 2.4 (a), (b) or (g).
2. Refusal to register a trademark must relate to the sign that constitutes a trademark as a whole. It may be
restricted to one or more of the goods or services for which the trademark is intended.
3. The Office shall notify the applicant without delay, in writing and stating reasons, of its intention to wholly
or partially refuse registration and shall allow the applicant to respond to such notification within a period laid
down in the implementing regulations.
4. If the Office’s objections to the registration are not resolved within such period, the registration of the
trademark shall be wholly or partially refused. The Office shall notify the applicant of its refusal without delay,
in writing, stating the grounds for refusal and mentioning the legal remedies against this decision as
provided for by article 2.12.
5. The refusal shall not become final until such time as the decision is no longer open to appeal or, if
applicable, until the decision of the court of appeal is no longer open to reversal by a court of cassation.
Article 2.12 – Appeal against refusal
1. Within two months following the notification referred to in Article 2.11 (4), the applicant may lodge a
request with the Brussels Cour d’appel, the The Hague Gerechtshof, or the Luxembourg Cour d’appel for an
order to register the trademark.
2. In connection with these proceedings, the Office may be represented by a member of staff appointed for
this purpose.
3. The court having territorial jurisdiction shall be determined by the address of the applicant or the address
of its representative or by the correspondence address as indicated in the application. If neither the applicant
nor its representative has an address or correspondence address within the Benelux territory, the competent
court shall be that chosen by the applicant.
4. The decision of the appeal court shall be open to referral to a court of cassation, which shall have
suspensive effect.
Article 2.13 – Refusal of international filings on absolute grounds
1. Article 2.11 (1) and (2) shall apply to international filings.
2. The Office shall inform the International Bureau as soon as possible of its intention to refuse registration,
in writing and stating reasons, by means of a provisional total or partial refusal of protection for the
trademark, at the same time allowing the applicant the opportunity to respond to said notice in accordance
with the provisions of the implementing regulations. Article 2.11 (4) shall apply.
3. Article 2.12 shall apply, it being understood that the court having territorial jurisdiction shall be determined
by the address of the representative or by the correspondence address. If neither of these two addresses is
on Benelux territory, the court having jurisdiction shall be that chosen by the applicant.
4. The Office shall inform the International Bureau without delay, in writing and stating reasons, of a decision
that is no longer open to appeal.
The relevant rules of the Implementing Regulations in respect of the BCIP read as follows:
Rule 1.15 – Time limit for filing objections against a refusal
1. The time limit specified for responding to a provisional refusal as referred to in Articles 2.11 (3) and 2.13
(2) of the Convention is at least one month; the time limit may be extended ex officio and will be extended on
request, but may not exceed a period of six months after the date on which the first notification was sent.
2. In relevant cases, an applicant objecting the provisional refusal must within the time limit stated in
paragraph 1 similarly comply with the requirements set out in Rules 3.6 and 3.7.
3. The Office will implement without delay the court decisions referred to in Article 2.12 (1) of the Convention
as soon as they are no longer open to appeal in cassation.
Rule 3.6 – Appointment of a representative
1. All activities at the Office or a national administration may be performed through the intermediary of a
representative acting as the agent.
2. The representative’s place of residence or registered office should be located in the European Community
or the European Economic Area.
3. All communications concerning these activities will be addressed to the representative.
4. Any party that does not have a place of residence or registered office, or has not appointed a
representative within the European Community or the European Economic Area, is required to provide a
correspondence address in the European Community or the European Economic Area.
Rule 3.7 – Power of attorney
1. Any party claiming to act as the representative of an interested party for the purpose of performing an
activity at the Office is presumed to have been authorized by the interested party.
2. If a representative requests the Office to surrender a registration, the representative must submit a power
of attorney to that effect.
3. If the Office has any reason to doubt the representative’s authorization concerning any activity
whatsoever, it may request the submission of a power of attorney. The period for submitting a power of
attorney is at least one month and will be extended by one month on request. Should a timely response not
be received, the request will not be considered.
3)
Article 2.11, paragraph 1, sub a, in conjunction with art. 2.1, paragraph 1, BCIP; graphic
representation of a sign
3.1)
Article 2.11, paragraph 1, sub a, BCIP is the “first stage” of the test on absolute grounds. It refers to
article 2.1, paragraph 1, BCIP, which defines the signs that can be filed. These signs must be graphically
represented and must serve to distinguish the goods or services as originating from a specific undertaking.
This ground for refusal will often apply to applications for signs that cannot be described as “traditional
trademarks”.
3.2)
In the LIBERTEL case, the Court of Justice of the European Communities (hereafter: “ECJ”) stated
that single colours cannot be filed in the form of just a colour sample. An application of this nature will be
refused. A colour sample combined with a description of the colour in words may suffice, provided the
description is “clear, precise, self-contained, easily accessible, intelligible, durable and objective“. A
description of a colour that does not satisfy these requirements will cause the application to be refused.
Example: The filing of an orange colour sample described as “orange” will be refused.
Likewise, a single colour may be filed as a colour sample in conjunction with a description, using an
internationally recognised colour code. This method is specifically mentioned by the ECJ.
Example: The filing of an orange colour sample described as “orange; PMS 144” will not be refused on the
grounds of article 2.11, paragraph 1, sub a, BCIP.
When a combination of colours is filed as a trademark, the graphical representation must also contain a
systematic arrangement associating the colours concerned in a pre-determined and uniform way (ECJ,
HEIDELBERGER BAUCHEMIE).
A colour code or description can be added to a trademark application that has yet to be registered. However,
once registration has taken place, no such changes can be made to the registered data.
For more on this, see point 5 of these guidelines. In principle, single colours and combinations thereof will be
refused because they are not distinctive.
3.3)
Further to the ruling of the ECJ in the SHIELD MARK case, a sound mark may only be filed if it is
graphically represented using a stave divided into bars, and showing, in particular, a clef, musical notes and
rests whose form indicates the relative value and, where appropriate, accidentals. The fact that it is a sound
mark must also be stated.
For more on this, see point 5 of these guidelines.
3.4)
It seems that it is not possible to file a smell mark. In the SIECKMANN case, the ECJ stated that
neither the description of a smell in a chemical formula nor a description in words, nor the filing of a smell
sample nor a combination of these satisfies the requirements of graphic representation, as it is not “clear,
precise, self-contained, easily accessible, intelligible, durable and objective”. The ECJ has not indicated any
alternatives that could satisfy those requirements, nor is the BOIP aware of any such methods.
3.5)
The filing of a variable sign is also excluded by this provision. For example, the ECJ ruled that an
application that relates to every conceivable shape of a transparent bin or collection chamber forming part of
the external surface of a vacuum cleaner was not a sign within the meaning of this provision (ECJ, DYSON).
4)
Article 2.11, paragraph 1, sub a, in conjunction with art. 2.1, paragraph 2, BCIP; grounds for
exclusion of three-dimensional trademarks
4.1)
Article 2.11, paragraph 1, sub a, BCIP also forms the basis for the refusal of a number of
categories of three-dimensional trademarks, namely the three-dimensional trademarks described in article
2.1, paragraph 2, BCIP: shapes which either (1) result from the nature of the goods or (2) give a substantial
value to the goods or (3) are necessary to obtain a technical result.
These grounds for exclusion are absolute. In the PHILIPS ruling, the ECJ stated that these grounds for
refusal are motivated by the desire to prevent the award of a trademark right (which in principle is perpetual)
having the effect of handing the holder of that right a monopoly for which other forms of protection with a
limited duration (patent, design, copyright) are intended. The trademark right is not intended to extend the
duration of lapsed statutory monopolies.
Example: The filing of the shape of a vase for the article “vases” will be refused because this shape gives a
substantial value to the goods. A consumer will buy such a product partly because its shape appeals and, if
he does not like the shape, he will not buy it.
If one of these grounds for exclusion applies, the sign cannot be registered because it has acquired
distinctiveness as a result of the use that has been made of it (ECJ, PHILIPS).
Lastly, with specific regard to the exclusion of shapes that are necessary to obtain a technical result, the
ECJ considers that this provision “precludes registration of a sign consisting of that shape, even if that
technical result can be achieved by other shapes.”
4.2)
By shape of the goods is also meant the shape of their packaging if the goods are, by nature,
shapeless and are or can only be sold packaged (ECJ, HENKEL bottle).
4.3)
According to the case law of the ECJ, it would appear that the criteria for assessing threedimensional trademarks must also be applied to a pictorial (device) mark (where there is no indication that it
is a three-dimensional trademark) that consists exclusively of the depiction of the goods or packaging. After
all, in that case too the sign is not one that is independent of the appearance of the goods referred to (ECJ,
STORCK 2 and HENKEL washing tablet).
5)
Article 2.11, paragraph 1, sub b, BCIP; lack of distinctiveness
5.1)
Article 2.11, paragraph 1, sub b, BCIP states that signs that are devoid of any distinctive character
must be refused. The motivation for this has to do with (public interest associated with) the essential function
of a trademark. This means that the consumer or end user must be able to identify the origin of the goods or
services to which the trademark refers such that he can distinguish them without any risk of confusion from
goods or services which have another origin (among others, ECJ, DAS PRINZIP DER BEQUEMLICHKEIT,
BioID, EUROHYPO).
5.2)
Article 2.11, paragraph 1, sub b, BCIP is an ‘umbrella provision’. Signs that must be refused by
virtue of the criteria of article 2.11, paragraphs 1, sub c and sub d, also fall under the criterion of article 2.11,
paragraph 1, sub b. Descriptive (c) and customary (d) designations lack distinctiveness by definition.
However, the reverse is not always the case: if a sign is not descriptive or does not constitute a customary
designation, this in no way justifies the conclusion that it possesses distinctiveness. Thus article 2.11,
paragraph 1, sub b, constitutes an independent ground for refusal (ECJ, POSTKANTOOR).
Example: A slogan or catchphrase can serve as a trademark provided the public sees it as being more than
just a laudatory or canvassing phrase and can deduce that the goods or services originate from a specific
company.
5.3)
The lack of distinctiveness criterion often applies to single colours and to three-dimensional
trademarks. Barring exceptional cases, it must be assumed that single colours and shapes will not be
perceived by the relevant public as a trademark given that the public is not accustomed to perceiving such
signs (in contrast to logos and words) as trademarks. Some examples here are the rulings by the ECJ in the
LINDE, LIBERTEL, HENKEL bottle, MAG INSTRUMENT, EUROCERMEX, STORCK 1 and 2, and
DEVELEY cases.
Example of an exception: A shape of a bottle filed for “perfume” goods will not be refused unless it is a very
ordinary bottle. In this sector, the relevant public has grown accustomed to the shape of the packaging
serving as a trademark.
5.4)
As a rule, however, a three-dimensional trademark will be refused because of its ab initio lack of
distinctiveness. Though, according to the case law of the ECJ, three-dimensional trademarks with ab initio
distinctiveness can exist. This is the case if the shape filed “departs significantly” from that which is usual on
the market. This “significant difference” need not consist of a “capricious addition” (PHILIPS). Incidentally, a
significant difference only seems to be possible if a “standard shape” exists for the goods concerned; after
all, if this is not the case, a shape will only add to the existing “diversity standard” and it is hard to imagine
that the public will be able to deduce from this that the goods originate from a specific company. To date, in
the relatively extensive body of legal precedents of the ECJ concerning three-dimensional trademarks there
is not one example of a shape that has been found to possess ab initio distinctiveness. In principle,
therefore, it must be assumed that three-dimensional trademarks will be refused.
5.5)
Incidentally, the same applies if the application does not indicate that it concerns a threedimensional trademark, but the filed sign certainly consists of a true depiction of the goods or packaging.
After all, even then the sign is not independent of the appearance of the goods to which it refers (ECJ,
STORCK 2 and HENKEL washing tablet).
5.6)
As regards colour marks too, only a few exceptions are likely to possess ab initio distinctiveness,
and then only when the number of goods or services in respect of which the trademark is being applied for is
very limited and the relevant market is very specific (ECJ, LIBERTEL). Moreover, the filed colour must be
highly unusual for the goods or services concerned.
Example: The colour “pink; RAL 4003” for tanks or submarines would be accepted as a trademark, as
military vehicles are, by nature, painted in camouflage colours.
However, the colour “orange, PMS 144” (the example in point 3 of these guidelines) filed for
“telecommunications services” will be refused. The use of all manner of colours in connection with services
is commonplace.
5.7)
Both three-dimensional and colour marks may, through use, acquire the distinctiveness required in
order to be registered. If acquired distinctiveness is demonstrated, colour and three-dimensional trademarks
will be accepted if they were refused only because they initially lacked distinctiveness. For more on this, see
point 10 of these guidelines.
5.8)
When testing the distinctiveness of sound marks, the considerations are the same as for colour and
three-dimensional trademarks. By their nature, it is just as unlikely that these signs will be readily perceived
as a trademark. The public is not accustomed to perceiving sounds as trademarks. Thus the BOIP will
refuse sound marks on the ground of lack of distinctiveness, unless acquired distinctiveness has been
demonstrated. For more on this, see point 10 of these guidelines concerning “acquired distinctiveness”.
5.9)
The criterion of article 2.11, paragraph 1, sub b, BCIP may apply in addition to the criterion of (c) if
it concerns a descriptive designation that was filed in a specific format. In such cases, it must be assessed
whether the chosen graphic representation outweighs the lack of distinctiveness of the words. If the BOIP
does not believe this to be the case, the sign will be refused.
In this connection, it can be pointed out that the relevant public is accustomed to businesses, advertising
agencies and the printing industry endeavouring to represent their statements in an attractive way. However,
the consumer will often notice a descriptive designation in an “attractive font” or “tasteful colour”; this alone
does not make a sign distinctive enough to be registered as a trademark. Thus the addition of a graphic
element will not, per se, create a distinctive sign. It can also be pointed out that there is a degree of interplay
between the descriptiveness of the word element and the requisite distinctiveness of the graphic element;
the more immediately descriptive the word, the more distinctive the graphic element needs to be in order to
overcome the lack of distinctiveness. Here it is always essential to consider the overall impression that the
sign makes on the relevant public.
The same applies when non-distinctive (banal) elements are added, such as top-level domain designations
(both ccTLDs such as .nl, .be, .lu and gTLDs like .com, .net, .info); laudatory designations such as “super”,
“top”, “extra”, “mega”, “royal”; standard prefixes such as possessive pronouns, the designation “euro”,
indications of time such as “24/24” and (parts of) telephone numbers such as “0800” and other dialling codes
and abbreviations of descriptive designations that are recognisable as such.
Example: The filing of the sign “certified window-cleaner (cwc)” for cleaning windows will be refused
because “cwc” in this case clearly functions as an abbreviation of the descriptive designation “certified
window-cleaner” and is therefore not enough to give the sign as a whole distinctive character.
6)
Article 2.11, paragraph 1, sub c, BCIP; descriptive signs
6.1)
Article 2.11, paragraph 1, sub c, BCIP stipulates grounds for refusal of descriptive signs. The BOIP
must refuse applications for trademarks that consist exclusively of signs or designations that may serve to
designate characteristics of the goods or services indicated in the application.
6.2)
For a start, it should be pointed out that the word “exclusively” in this provision is used to qualify the
word “consist” and not the phrase “may serve”. The ECJ stated (DOUBLEMINT) that “the exclusively
descriptive character of the trademark (…) is not the test laid down in [this provision].”
6.3)
Thus it is essential to assess whether a sign (or part thereof) may serve to designate
characteristics of the goods and services in question, without consideration as to whether (1) there are
synonyms for the designation, (2) the sign only describes (commercially) less essential characteristics of the
goods or services, (3) there are more usual designations or ones that are more immediately descriptive, or
(4) the sign may also have other meanings (ECJ, POSTKANTOOR). Furthermore, the assessment must
also look to the future: the BOIP must ask itself whether the filed designation could in the future serve to
describe the goods or services concerned (ECJ, CHIEMSEE, POSTKANTOOR).
6.4)
If the sign filed consists of just one word, this test is straightforward. Based on linguistic skills,
dictionaries, the Internet, general knowledge and common parlance, it is possible to investigate whether the
sign filed is descriptive for the purposes of this provision.
6.5)
If the sign filed consists of more than one word, its descriptive nature must be determined on the
basis of the combination formed by those words. To start with, the constituent elements must be
investigated, followed by an assessment of the sign as a whole, in the form in which it is filed. Generally
speaking, it must be assumed that a sign composed of descriptive elements is itself descriptive. The only
time this does not apply is if the combination is more than (or differs perceptibly from) the sum of the parts.
This is not the case if the sign has been formed by simply placing descriptive designations together. A
perceptible difference only occurs if the combination introduces unusual variations as to syntax or meaning,
for example (ECJ, POSTKANTOOR, BIOMILD). Examples of this might be a surprising turn of phrase, an
additional connotation or a hidden meaning created by the combination of designations. It is also possible to
have a sign that is so far removed from the meaning of its constituent components that it is perceived as a
new word with a meaning of its own that is independent of the meaning of its components. However, the
word thus formed must also be analysed to establish whether it is descriptive in respect of the goods or
services denoted.
Example: The sign “tabletop” for a restaurant guide will be accepted.
6.6)
The mere fact that a sign filed cannot be found in a dictionary does not mean that it is not a
descriptive designation. By their very nature, dictionaries cannot contain every single word, partly because
the normal rules of language allow words to be formed by compounding other words. The BOIP’s primary
concern is to ensure that its assessment reflects the economic reality, which also means taking account of
the fact that language evolves rapidly. When dictionaries do lag behind a little, a quick search on the Internet
can reveal that a specific designation has now become commonplace among the public as a descriptive
designation.
Example: The designation “plaza” (used as a suffix to a descriptive designation), filed for goods and services
delivered via the Internet, is very common and well known. Thus it is not considered to be distinctive for
such goods and services, although in principle those goods or services bear no relation to a plaza or plazas
in the traditional meaning of the words.
Example: “Medi” cannot be found in dictionaries as a common abbreviation for medical. However, this does
not alter the fact that it is a very common designation that will immediately be perceived by the public in its
descriptive sense.
Example: “Flex” is a common designation that is used in connection with work, to indicate flexible
workforces, hot-desking etc. In this instance, flex is an abbreviation of flexible. Although not a dictionary
definition, this designation is discerned and understood by everyone as being that abbreviation – even
outside the aforementioned sector. The same is true of the abbreviation “flexi”.
Example: The use of the symbol @ (pronounced “at”) is now familiar to everyone as a result of the growth of
email and Internet use. If a sign contains the word “at” used in a descriptive sense, it will not acquire
distinctiveness if this word is replaced by the @ symbol. The same applies when the character A in a word is
replaced by the @ sign.
Other examples: € for E; $ for S.
6.7)
The assessment must also take account of the fact that, by their very nature, wordmarks are not
just read, but are heard as well, so the aural impression created is also relevant to the assessment (ECJ,
POSTKANTOOR).
Example: A designation such as 4U (pronounced “for you”) will in principle be regarded as descriptive since
the aural impression of the sign is descriptive. Furthermore, it should be pointed out that such a way of
spelling (influenced by SMS among other things) has now become common, so on the basis of article 2.11,
paragraph 1, sub d, such signs will also be refused.
Other examples: expert becomes xpert; great becomes gr8.
6.8)
Public interest is also the basis for 2.11, paragraph 1, sub c, BCIP, in the sense that it must
naturally be possible for anyone to use descriptive designations freely (among others, ECJ, CHIEMSEE,
POSTKANTOOR).
7)
Article 2.11, paragraph 1, sub d, BCIP; customary designations
7.1)
Article 2.11, paragraph 1, sub d, BCIP requires the BOIP to refuse a sign if, in common parlance or
in commercial circles, it has become a customary designation for the goods and services in question (ECJ,
BRAVO). The BOIP takes the view that a sign will rarely be refused on the basis of (d) if (c) does not also
apply. Paragraph 1d provides grounds for refusal of signs that may well have been new designations at an
earlier stage but, through use, have become a customary designation for the goods or services in question.
If so, they would appear to also be covered by article 2.11, paragraph 1, sub c, BCIP.
Example: The new, made-up name for a new and original concept or an invention will as a rule very quickly
become the customary designation for this concept or product, and so can be described as a generic name
– albeit a new one. Examples from the past include words such as “gramophone” or “klaxon”, which became
generic designations for the products concerned.
8)
Article 2.11, paragraph 1, sub e, in conjunction with article 2.4, sub a, b and g, BCIP;
accepted principles of morality and public policy or signs as referred to in article 6ter of the Paris
Convention, deception and protected indications of geographical origin for wines and spirits
8.1)
Article 2.11, paragraph 1, sub e, refers to article 2.4 sub a, b and g, BCIP. On the basis of these
provisions, the BOIP will refuse (sub a) applications that are contrary to accepted principles of morality or to
public policy or signs as referred to in article 6ter of the Paris Convention, (sub b) deceptive trademarks and
(sub g) applications for trademarks in respect of wines or spirits that contain an indication of geographical
origin, although the products in question do not originate from that location.
8.2)
Contravention of accepted principles of morality or public policy is very rare in practice. Article 6ter
of the Paris Convention refers to flags, armorial bearings and other official emblems belonging to states or
international organisations. A trademark that incorporates this kind of sign may only be entered in the
Benelux register with the consent of the state or organisation in question. In practice, this ground is applied
most to applications for trademarks that include (parts of) the flag of the European Union.
8.3)
If a sign containing indications of (characteristics of) goods or services is filed for other goods or
services in respect of which the use of the sign is liable to deceive the public, the trademark will be (partially)
refused.
Example: A depiction of a package containing the designation “coffee” is liable to deceive the public if used
for goods such as tea, rice or cocoa. If the application is made for such goods, it will be partially refused in
this respect.
8.4)
On the basis of article 23 of the TRIPS agreement (Agreement on Trade-Related Aspects of
Intellectual Property Rights), the BOIP must refuse trademarks that contain indications of the origin of wines
and spirits that do not originate from the place indicated in the trademark. However, it is not obliged to refuse
a trademark if the application was made by an applicant in good faith, at a time when the geographical
indication in question was not protected in the country involved or in the Community. When performing the
absolute grounds examination, the BOIP assumes that the applicant is acting in good faith.
Example: An application for a label containing the designation “Beaujolais” will be refused for wines that
were not produced in Bourgogne.
Incidentally, a sign consisting solely of a geographical indication will often already have to be refused on the
basis of article 2.11, paragraph 1, sub c, BCIP (see point 6 of these guidelines).
9)
Procedure and basic premises for examination on absolute grounds
9.1)
In terms of the procedure, the BOIP (as dictated by the ECJ) takes as its basic premise the fact that
the statutory criteria must be applied in accordance with their underlying rationale. The examination on
absolute grounds is performed in the public interest, which forms the basis for any refusals. The boundaries
and interpretations laid down by law and jurisprudence provide the handles on the basis of which the BOIP
decides whether to allow or refuse a trademark. The BOIP tries to perform the test in as factual and concrete
a manner as possible and the approach it chooses reflects as far as possible the (economic) reality within
which the trademark is going to be used.
Example: A consumer who is looking for vitamin supplements will assume, when he finds a pack bearing the
indication “C”, that it contains a vitamin C supplement; a consumer who wants to buy a computer will think of
a hard drive when he sees that same indication, “C”.
9.2)
The BOIP takes as its basic premise the need to consider the probable perception by the relevant
public when confronted with the sign in question. The relevant public is defined by the ECJ as being a
reasonably well-informed, observant and circumspect average consumer of the relevant class of goods or
services (GUT SPRINGENHEIDE).
Example: A descriptive designation in Latin, filed as a word mark, will usually be distinctive, as the public is
not widely familiar with that language. If, however, such an application is made for surgical equipment, the
situation changes. Doctors are usually familiar with Latin, as the language is used in their field, as indeed it
is in the legal profession too.
9.3)
In this connection, it is also of relevance that different official languages are spoken in the Benelux
countries and that public familiarity with other languages, particularly English, is relatively high. There are
also different dialects. Even if a sign is only understood in its descriptive meaning in one region of the
Benelux territory, this will still mean that it cannot be registered as a trademark.
Example: The sign “ristorante italiano” for catering services will be refused because, even though Italian is
not a commonly used language in the Benelux countries, this will still be understood in its descriptive
meaning by (the vast majority of) the Benelux public.
9.4)
Lastly, it should be pointed out that the effects of article 2.23, paragraph 1, sub b, BCIP have no
bearing on the BOIP’s decision on whether or not to refuse a trademark. This would not be consistent with
the system provided for by articles 2.11 and 2.12 BCIP (ECJ, LIBERTEL). The argument advanced by some
that it is not necessary to refuse descriptive signs because others can still use them in a descriptive sense is
therefore irrelevant. In the public interest, which with descriptive signs means the interest of others not to
have to defend themselves against invalid trademarks, the legislator has opted for a test beforehand by the
Office. For details of the scope of this test, see point 11 of these guidelines.
10)
Acquisition of distinctive character through use (acquired distinctiveness)
10.1)
If a sign is not, in itself, distinctive, it may become so through use (so called acquired
distinctiveness). In order to prove acquired distinctiveness, it must be demonstrated that the sign, as a
consequence of its use, is now perceived by the relevant public as being a trademark that distinguishes the
goods or services of the applicant. It is up to the applicant or its representative to demonstrate this, by
submitting documents concerning, among other things, the market share held by the trademark, how
intensive, geographically widespread and long-standing use of the trademark has been, the amount invested
by the undertaking in promoting the trademark, the proportion of the relevant class of persons who, because
of the trademark, identify goods or services as originating from a particular undertaking, and statements
from chambers of commerce and industry or other trade and professional associations. An opinion poll may
also be submitted (ECJ, CHIEMSEE). The Benelux Court of Justice (hereafter: BCJ) has decided that a sign
that was not distinctive originally can only be registered if acquired distinctiveness is demonstrated prior to
the application date (BCJ, BIOMILD 1).
10.2)
It should be noted that mere proof that a sign has been used is not enough to demonstrate
acquired distinctiveness: the test is whether the sign, through its use, is now genuinely perceived by the
relevant public as a trademark, in other words a sign that identifies the goods or services as originating from
one specific undertaking. This can only be assessed on the basis of information relating to the whole market
for the goods or services concerned, and the position of the sign in question within that whole. Moreover, the
circumstances in which this condition for the acquisition of distinctiveness is satisfied cannot be established
solely on the basis of general, abstract data, such as specific percentages.
10.3)
For the purposes of trademark rights, the Benelux countries are one indivisible territory. This
means that a sign can only be a valid trademark if it qualifies as such in the whole of Benelux. Acquired
distinctiveness will therefore always have to be demonstrated in the entire Benelux territory, or in any case
wherever it was that the sign lacked ab initio distinctiveness (ECJ, EUROPOLIS). For a word that, for
example, is descriptive in English, acquired distinctiveness will have to be demonstrated throughout the
Benelux territory, assuming that its meaning is understood in every part of this territory. The same applies to
“language-neutral” signs, such as colour or three-dimensional trademarks. However, a word that is only
descriptive in, for example, Luxemburgish will only have to acquire distinctiveness among the members of
the Benelux public who understand that language.
The exception to this rule is if the trademark has an inherent geographical boundary.
Example: A local or regional newspaper will by its nature only be read within its distribution area, so
acquired distinctiveness within that area is sufficient in principle.
10.4)
Acquired distinctiveness can only overcome the grounds for refusal referred to in 2.11, paragraph
1, sub b, c and d, BCIP. As already indicated in point 4.1, this especially does not apply to the specific
grounds for exclusion for three-dimensional trademarks as referred to in article 2.1, paragraph 2, BCIP (ECJ,
PHILIPS).
11)
Policy of restraint
With the introduction of the examination on absolute grounds in 1996, the Joint Commentary of the
Governments (protocol amending the BLM dated 2 December 1992) stated that the (then) BTO could only
refuse manifestly inadmissible applications. However, both the BCJ and the ECJ have indicated that this
remark cannot have an influence on the test. The BCJ considered that: “The fact that, pursuant to the Joint
Commentary, the BTO, on the basis of article 6bis, will only be allowed to refuse “manifestly inadmissible
applications” has no bearing on the answer to the questions (…) (BIOMILD 1).” The ECJ considered that:
“the large number and detailed nature of the obstacles to registration set out in articles 2 and 3 of the
directive, and the wide range of remedies available in the event of refusal, indicate that the examination
carried out at the time of the application for registration must not be a minimal one. It must be a stringent
and full examination, in order to prevent trademarks from being improperly registered” (LIBERTEL) and:
“The practice of a trademark registration authority which concentrates solely on refusing to register
‘manifestly inadmissible’ trademarks is incompatible with article 3 of Directive 89/104” (POSTKANTOOR).
12)
Own merits
12.1)
Applications are examined on the basis of the applicable law and each application is examined on
its own merits. The refusal or acceptance by the BOIP, a foreign registering body or the OHIM of similar or
even identical applications is irrelevant to this assessment. Universal principles of law, such as those that
are familiar from administrative law, do not mean that the BOIP must accept a sign if an identical or a similar
sign has already been accepted, no matter which body accepted it. The BCJ comments thus on this matter:
“The nature of the substantive examination procedure for the filed sign as provided for by [article 2.11 and
article 2.12 BCIP], on the basis of the criteria set forth in [article 2.11, paragraph 1, BCIP], is such that the
matter of those universal principles of law have no bearing” (BCJ, POSTKANTOOR 1). The ECJ considers
that: “The fact that a trademark has been registered in a Member State in respect of certain goods and
services has no bearing on the examination by the trademark registration authority of another Member State
of an application for registration of a similar trademark in respect of goods or services similar to those for
which the first trademark was registered” (ECJ, POSTKANTOOR).
12.2)
It should be pointed out in this connection that the procedure for examination on absolute grounds
implies the solution of a point of law. The BOIP has to examine each application on the basis of the legal
criteria set forth in the BCIP, so this is not a matter of policy whereby it is up to the BOIP whether or not to
accept the application.
13)
Exclusion of certain characteristics
A sign that describes (characteristics of) the goods or services referred to in the application cannot be
registered on the condition that the goods or services do not possess those characteristics. The addition of a
“disclaimer” to the list of goods and services such as “insofar as not relating to [descriptive designation that
was indicated as trademark at the application]” cannot, under any circumstances, overcome the BOIP’s
objections and is contrary to the system for the protection of trademarks as provided for in the European
trademarks directive (ECJ, POSTKANTOOR).
14)
Arguments to be put forward during the period allowed for lodging objections
If an objection is raised against a provisional refusal, it is important to put forward all the arguments in good
time within the period allowed for lodging objections (see point 16 of these guidelines). This is no longer
possible once this period has elapsed. Also if an appeal is lodged against the final decision of the BOIP, the
arguments advanced during the period allowed for lodging objections determine the scope of the appeal that
can be made. The BCJ (LANGS VLAAMSE WEGEN) considers in this respect that: “[one of the designated
courts] can therefore only judge whether or not the [BOIP] was justified in refusing to register the trademark;
that this means that [these courts] [can] only consider the information on the basis of which the [BOIP]
reached or should have reached its decision; that consequently, [these courts] cannot hear claims that are
beyond the scope of the [BOIP]’s decision or that have not been presented to the [BOIP]”.
In an appeal case, new documents can be presented in respect of an argument raised during the
registration procedure (BCJ, EUROPOLIS 1). However, it goes without saying that it saves time and money
if documents are submitted at the earliest possible stage.
15)
Goods and services
15.1)
In practice, it appears that applications often comprise a standard list of goods or services. Also,
some applicants seem to use the practice of making as broad an application as possible. In most cases,
because of the way the registration fee system works, at least 3 classes are indicated.
Example: Applicants very often indicate the service “advertising” in class 35, obviously because they
advertise. However, they are often not advertising agencies, organisations that, by definition, provide an
“advertising” service.
Example: In addition to the goods that are produced under their brand name, businesses that give away
clothing bearing the name of their business or the brand name of their product will often state “clothing,
footwear and headgear” in class 25 – but they are not clothing manufacturers or traders.
15.2)
The BOIP examines an application on the basis of the goods or services for which the application
has been made and may limit a refusal to certain goods or services. In that case, a partial refusal is issued.
However, the BOIP does not have to argue, on a product by product or service by service basis, why an
application is being refused. If the BOIP is of the opinion that a ground for refusal applies to an entire
category or class of goods or services, it may suffice to give global reasons for this category or class (ECJ,
THE KITCHEN COMPANY).
15.3)
In this connection, applicants should be aware that (among other things) an application will be
refused if the sign may serve to designate characteristics of the applied for goods or services. In principle,
the actual use of the sign has no bearing on this. Refusal can sometimes be avoided by looking critically at
the list of goods or services in respect of which the application is being made. Apart from that, such a critical
approach can also reduce the likelihood of oppositions. It should be noted that it is up to the applicant to limit
the list of goods or services designated in the application if necessary; the BOIP will not, in principle, make
any suggestions in this regard. A request for the list of goods or services to be limited will only be processed
if it has been formulated unconditionally and unambiguously. Lastly, it must be remembered that a
disclaimer such as “all the aforementioned goods or services insofar as not relating to [descriptive
designation]” is not possible (see point 13 of these guidelines).
15.4)
A limitation of the list of goods and services can only be requested during the period allowed for
lodging objections. Once this period has expired, this is no longer possible, even during any appeal that is
raised. After all, this would change the nature of the dispute (BCJ, LANGS VLAAMSE WEGEN, see also
point 14 of these guidelines). However, it is still possible to withdraw the entire application, or in the event of
a partial refusal, the goods or services to which this relates until the refusal becomes definitive within the
meaning of article 2.11 paragraph 5 BCIP (i.e. while an appeal is still possible).
15.5)
In this respect, it is again noted that the BOIP endeavours as far as possible to perform the
examination on absolute grounds in light of the (economic) reality in the sector in which, according to the
application, the applicant operates.
16)
Some practical pointers
a)
The time limit for the submission of arguments against a provisional refusal is a maximum of six
months. In the first instance, a time limit of three months is set. This time limit is extended once ex officio by
one month and can be further extended on request up to the maximum time limit of six months. Once the
period allowed for lodging objections has elapsed, the BOIP makes a final decision based on all the facts
and circumstances of which it was made aware within the due period. See also point 14 of these guidelines.
b)
An objection to a provisional refusal can be raised by the applicant himself or by a representative
(agent). The latter is assumed to have been authorised by the applicant and, in principle, does not therefore
need to present a power of attorney. For an appeal against a definitive refusal (article 2.12 BCIP), the rules
of national procedural law apply and legal representation is therefore mandatory. The BOIP may be
represented during the appeal proceedings by a member of staff appointed for this purpose.
c)
In the event of a refusal on absolute grounds, the need to comply with all formal requirements can
sometimes be overlooked. Naturally, the submission of a letter of objection to a provisional refusal does not,
for instance, discharge the applicant or his representative from the obligation, in the case of a pictorial
(device) mark, to submit representations of it. Furthermore, it should be noted that the BOIP always
endeavours to inform applicants of all procedural defects as quickly as possible.
d)
In practice, the vast majority of objections against provisional refusals are submitted on the last day
before the expiry of the time limit, which means it is often impossible to inform those who submitted the
objections of any defects in time. Furthermore, submitting objections at this late stage makes it impossible to
have a more detailed exchange of arguments. Especially when acquired distinctiveness is being asserted, it
is advisable to do this and to submit supporting material well ahead of the time limit. The applicant is then
still able to supplement his arguments and material once the BOIP has rejected the previous claim.
e)
The BOIP strives to respond to written objections within a month of receipt. In this connection, it
should be noted that when dealing with objections against refusals, the BOIP takes account of the
applicant’s interests, and in particular the option of submitting additional arguments. Consequently, when
dealing with objections, letters submitted well ahead of the expiry of the time limit may be given priority over
letters submitted so late that the applicant would not have time to submit further arguments.
17)
Concluding remarks
These guidelines are by no means exhaustive and the examples provided are intended merely to illustrate
the way in which the legal conditions are applied.
It should also be noted that practical experience since 1996 has shown that examination on absolute
grounds is a dynamic area of law, in which the highest lawcourts tighten up and refine the law on a fairly
regular basis. Moreover, under the influence of communications technology, the media and the Internet in
particular, language is evolving very quickly, knowledge of languages is increasing and “new” indications are
catching on very quickly among the public at large. The BOIP will continually adapt its day-to-day practices
and, from time to time, these guidelines to take account of these developments.
18)
Appendix: legal precedents referred to in these guidelines
ECJ:
- GUT SPRINGENHEIDE (C-210/96, 16 July 1998)
- CHIEMSEE (C-108/97-109/97, 4 May 1999)
- BABY-DRY (C-383/99, 20 September 2001)
- BRAVO (C-517/99, 4 October 2001)
- PHILIPS (C-299/99, 18 June 2002)
- SIECKMANN (C-273/00, 12 December 2002)
- LINDE (C-53/01-55/01, 8 April 2003)
- LIBERTEL (C-104/01, 6 May 2003)
- DOUBLEMINT (C-191/01, 23 October 2003)
- SHIELD MARK (C-283/01, 27 November 2003)
- POSTKANTOOR (C-363/99, 12 February 2004)
- BIOMILD (C-265/00, 12 February 2004)
- HENKEL bottle (C-218/01, 12 February 2004)
- HEIDELBERGER BAUCHEMIE (C-49/02, 24 June 2004)
- MAG INSTRUMENT (C-136/02, 7 October 2004)
- DAS PRINZIP DER BEQUEMLICHKEIT (C-64/02, 21 October 2004)
- EUROCERMEX (C-286/04, 30 June 2005)
- BioID (C-37/03, 15 September 2005)
- STORCK 1 (C-24/05, 22 June 2006)
- STORCK 2 (C-25/05, 22 June 2006)
- EUROPOLIS (C-108/05, 7 September 2006)
- DYSON (C-321/03, 25 January 2007)
- THE KITCHEN COMPANY (C-239/05, 15 February 2007)
- HENKEL washing tablet (C-144/06, 4 October 2007)
- DEVELEY (C-238/06, 25 October 2007)
- EUROHYPO (C-304/06, 8 May 2008)
BCJ:
- BIOMILD 1 (A 98/2, 26 June 2000)
- POSTKANTOOR 1 (A 99/1, 29 November 2001)
- LANGS VLAAMSE WEGEN (A 2002/2, 15 December 2003)
- EUROPOLIS 1 (A 2005/1, 29 June 2006)
All rulings in appeal cases relating to refusals by the BOIP can be found at www.boip.int.
All rulings by the ECJ can be found at http://curia.europa.eu.
All rulings by the BCJ can be found at www.courbeneluxhof.info.