New cancellation procedures to attack Benelux trademarks

A registered trademark has to be used within five years. If not, the expiration of this trademark can be invoked. Until recently, this could only be done through an (expensive) court procedure. Since June 1st 2018 there is an alternative way to achieve this. From that day onward, any interested party can initiate administrative proceedings with the Benelux trademark authorities to invoke the lapse of a Benelux trademark that is not used (or to request the nullity of a descriptive trademark). The costs for this are fairly small.

On the one hand this new arrangement is a blessing for companies that want to launch a new brand. If an old trademark is not used, it can be removed quickly and easily, making way room for the new trademark. However, there is also a downside. Companies that used to be active in domain name hijacking now use these procedures to make a quick buck. They start proceedings against old trademarks and only if its trademark owner pays them a large sum of money, the company withdraws the procedure.

Up till now this is permitted. Trademark holders should take precautions in order to prevent this from happening, allowing these companies to make money. Check the trademark portfolio regularly. If there are trademarks that have remained unused in the past five years, that are important to the holder to maintain, re-file the trademark. This is allowed in the Benelux! This way the holder keeps the exclusivity of the trademark and it is in fact cheaper than messing with this kind of 'rogue' companies.


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MENTOS has been selling chewing gum under the name MENTOS PURE FRESH for several years. In order to protect her rights MENTOS has registered the following trademarks: the logo MENTOS PURE FRESH, the logo MENTOS PURE FRESH 3 and a figurative depiction of the word PURE. Defendant sells chewing gum under the trademark DENTYNE PURE and has registered its logo as a trademark. Infringement or not?
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