Unlike other intellectual property rights, the validity of trademarks is not limited in time - for all that a renewal of the ten-year period is requested in time.
Trademark protection may also be lost in two other cases, firstly by surrender of the right, and secondly by a decision of a court or the BOIP ordering the invalidity or lapse of the trademark. The latter hypothesis may arise, for example, when the trademark is not normally used or is used in a misleading manner or if the trademark became the habitual or generic term for the product it protects.
Term of validity of the trademark
A Benelux trademark is valid for 10 years from the filing date. This period may be renewed provided that the renewal is requested on time and the necessary fees are paid.
Voluntary deregistration of the trademark
The holder of a trademark may surrender his right by requesting deregistration of his trademark. This deregistration applies to the whole Benelux territory, but may be limited to one or more goods or services for which the trademark is registered.
Invalidity of the trademark
Even after the registration procedure has been completed, the trademark holder is never fully certain that his trademark is valid. The trademark granted may be declared void after registration, if it appears that, at the time of registration, the conditions for protection of the trademark were not met.
Certain grounds for invalidity may be invoked at any time and by any interested person. These include: the absence of distinctiveness and the illegality of the sign which is registered as a trademark (also referred to as absolute grounds for invalidity).
On the other hand, the 'relative grounds for invalidity', i.e. the unavailability of the sign, can only be invoked by an interested person, if the holder of the earlier registration or the third party concerned takes part in the action. Unlike absolute grounds, in some cases invalidity must be invoked within a certain period of time.
Keep in mind that the holder of an earlier trademark who acquiesces to the use of a registered later trademark for five years can no longer invoke invalidity on the basis of his earlier trademark, unless the filing of the later trademark was made in bad faith; see below 'loss of rights due to acquiescence'.
Loss of rights due to acquiescence
A trademark holder must remain vigilant. Trademark law penalises trademark holders who, during an uninterrupted period of five consecutive years, do not take action against the use of a subsequently registered identical or similar trademark. In this case, the holders of inactive trademarks lose the benefit of an action against counterfeiting, but also of an action for invalidity of the subsequent trademark. In practice, two identical or similar trademarks may, therefore, coexist.
Please note that tolerating the simple use of a sign (not registered as a trademark) does not lead to loss of rights.
Lapse of the trademark
The trademark right may be declared lapsed by a court or by the BOIP in the following circumstances:
Absence of normal use of the trademark
If a trademark is not used for five years, the court or the BOIP may be asked to declare the trademark lapsed and to have it deregistered due to a lack of normal use of the trademark.
To avoid this drastic sanction, it is, therefore, crucial for trademark holders to ensure that, during the life of the trademark, there are no uninterrupted periods of five years during which there is no normal use of the trademark. 'Normal use' means actual exploitation; purely symbolic use will not be sufficient. Assessing whether the use of the trademark is normal must be based on all the facts and circumstances likely to establish the reality of the commercial exploitation of the trademark in the course of trade. This use must at least be within one of the Benelux Member States (for a Benelux trademark) or the European Union (for a European Union trademark). However, use in just one European Union country does not automatically constitute normal use in the European Union.
As regards a European Union trademark, the Court of Justice of the European Union has held (in judgement C-149/11) that a European Union trademark has been 'genuinely used' when it is used in accordance with its essential function and with a view to maintaining or creating market shares in the European Union for the goods or services designated by that trademark. In determining whether these conditions are met, all relevant facts and circumstances must be taken into account, such as the characteristics of the relevant market, the nature of the goods or services protected by the trademark, the territorial and quantitative scope of use and the frequency and regularity of use. To assess the requirement of 'genuine use of a trademark in the Community', it is necessary to disregard the borders of the territory of the Member States.
The holder of the trademark may prevent lapsing by invoking a valid reason which justifies the absence of normal use. Only circumstances which make the use of the trademark impossible or excessively difficult, and which are beyond the control of the trademark holder, will be accepted by the courts as just grounds. Unfavourable market conditions, unexpected lengthy negotiations on the acquisition of a trademark or a temporary lack of success of the product are not just grounds for an absence of normal use of the trademark.
Similarly, when a trademark is used in a misleading manner, i.e. in a way that might mislead the public as to, among other things, the nature, quality or geographical origin of the goods or services, the court or the BOIP may declare the trademark lapsed. Examples include a trademark for a beverage that bears a reference to a place name when the product has no connection to that region.
Transformation of the trademark into a habitual term
Sometimes a trademark - usually a verbal trademark - is used in the course of trade as a generic name to designate certain goods or services. Often, successful trademarks are used generically by consumers (e.g. aspirin). In such cases, the trademark can no longer fulfil its original function and may be declared lapsed.
A court or the BOIP will only apply this penalty of lapse of the trademark when it is proved that the transformation into a generic term is due to the activity or inactivity of trademark holder himself. This may be the case, for example, if the owner does not take action against third parties who use the trademark as a generic name. This situation has arisen in relation to the trademarks ‘aspirin’, ‘kleenex’ and ‘walkman’, among others.