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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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?