Benelux IPO abolishes paper applications and changes Rules on evidence submission

On 1 December 2020, the Benelux Intellectual Property Office (BOIP) issued a decision to abolish paper applications for trademarks and designs. The decision will come into force on 1 January 2021 and paper applications filed after that date will be disregarded. 

On the same day, the BOIP’s Director General issued new Rules governing submission of documents and evidence in opposition and cancellation proceedings, as well as provisional refusal proceedings. The new Rules, which will also come into force on 1 January 2021, will introduce an obligation to bundle and number pieces of evidence, introduce tables of content for easier identification of each piece of evidence, and recommend that a limit of 110 pages of evidence materials is observed. 

  1. Abolishment of paper applications and e-communication

Following the abolishment of applications sent via fax on 1 November 2020, abolishment of paper applications for trademarks and designs is another BOIP’s step which reflects modern and most common means of communication with the Office. In their announcement of the change, BOIP explained that, in recent years, over 99% of all applications were filed electronically via “My BOIP” platform, while in 2019 there was not a single design application received in the paper form. 

According to BOIP, the new exclusive means of communication eliminates the risk of manual-entry errors, increases the speed of document processing, and aligns the single method of applying for Benelux trademarks and designs with the one already used for international applications. In addition, it reflects developments in electronic filing within Benelux countries and reduces costs of maintaining a paper-entry infrastructure. 

BOIP’s user friendly online services already allow full electronic communication between the Office and its clients. “My BOIP” Message Box allows exchange of all e-communications related to national and international applications, oppositions, renewals, transfers, name/address changes and agent information, while a simple-to-use online contact forms are used for cancellation actions and recordal/cancellation of pledges, license or seizure, as well as for limitations of goods and services. Therefore, the upcoming abolishment of paper applications should not be strongly felt by BOIP’s clients. 

  1. Changes to the Rules on supporting documents and evidence submission

According to the BOIP communication, the aim of the new Rules on submission of documents and evidence is to help parties ensure that large quantities of evidence are correctly interpreted and understood and that it is immediately clear which part of the substantiation and legal grounds is supported by each piece of evidence. This should minimise the risk that parts of evidence are overlooked or misinterpreted, which can often negatively influence the outcome of opposition, cancellation, and provisional refusal proceedings. They should also help reduce the unnecessary work and processing time for the BOIP and the parties involved.  

As of 1 January 2021, any evidence not meeting the criteria described below will be rejected by the BOIP:

All pieces of evidence and documents must be included in a bundle, which must start with a table of contents indicating:

  1. the number of each piece of numbered evidence/document within the bundle;
  2. a short description of each piece of evidence; 
  3. the facts proved by each piece of evidence. 

Examples of short descriptions and the facts they prove (provided by the BOIP) include: 

  • “Invoices for [products] with [brand] from period [month year] – [month year]; including turnover figures for [products] with [brand] from period [month year] – [month year]”.
  • “Examples of advertisements for [products] with [brand] in [newspaper, country]; [magazine, country] from period [month year] – [month year]”.
  • “Market research by [name of research institute] on knowledge of [trade mark] in [country], d.d. [dd-mm-yyyy]”.
  • Annual reports of [submitter] covering the period [year] – [year].

When relying on the evidence in substantiation of a claim, ground or arguments, a number of the referenced evidence should be included in the text, which allows easier identification of the exact document discussed. This helps parties to the dispute to more easily refer to the piece of evidence when it supports more than one statement or legal ground. 

To make identification of relevant parts of larger documents easier (for example in a long article, a full annual report, or a full-page advertisement), relevant parts should be marked or highlighted with an index, page marker, or a similar precise indicatior.

Finally, BOIP encourages the parties to limit the size of bundles of evidence and to follow the “less is more” principle (less strong evidence is better than more irrelevant or repetitive evidence). BOIP strongly recommends observing a maximum of 110 pages.

New Rules will apply to all proceedings where an invitation to submit evidence is issued by the BOIP after 1 January 2021 or to proceedings where a provisional refusal was pronounced after that date.