LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre, Elvinger Hoss Prussen
5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Opposition An opposition against the registration of a Benelux trade mark application must be filed before the BOIP within two months from the publication of the trade mark application. A potential opponent cannot request extensions of time to file an opposition. The applicant and the opposing party may suspend the opposition proceedings to reach an amicable resolution. They can do so at any time by submitting a joint request to suspend the proceedings, but the suspension will be free of charge only before the start of the opposition proceedings (during the so-called “cooling-off period”) and for the first three suspen - sions. Several suspensions of four months can be requested. Revocation and Cancellation The Benelux Convention does not provide any time - frame for filing a revocation or cancellation action. However, the owner of an earlier trade mark who has tolerated the use of a later registered trade mark for a period of five consecutive years with knowledge of such use may no longer request invalidity, on the basis of this earlier trade mark, for the goods or services for which the later trade mark was used, unless registra - tion of the later trade mark was applied for in bad faith. There is no revocation/cancellation action for authors’ rights (as there is no registration thereof under Lux - embourg law). 5.2 Legal Grounds for Filing an Opposition or Cancellation Opposition The owner of an earlier trade mark has the following grounds for filing an opposition against the registra - tion of a trade mark application. • Preventing identical reproduction of the earlier trade mark: the contested application is identical to an earlier trade mark, and the goods or services
for which the trade mark is applied for are identical to the goods or services for which the earlier trade mark is protected. • Preventing the imitation of the earlier trade mark leading to a risk of confusion for the public: due to the contested application’s similarity to the ear - lier trade mark and the similarity of the goods or services covered by the trade marks at stake, there is a likelihood of confusion on the part of the public (which includes the likelihood of association with the earlier trade mark). • Preventing the dilution of the earlier trade mark: the contested application is identical or similar to an earlier trade mark, regardless of whether the goods or services for which it is applied or registered are identical or similar to or not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Ben - elux territory and the use of the later trade mark without due cause would take unfair advantage of or be detrimental to the distinctive character or reputation of the earlier trade mark. Cancellation The reasons for cancellation of a Benelux trade mark are the same as: • those for the refusal of registration (please see 4.10 Refusal of Registration ); and • the legal grounds for filing an opposition against a trade mark application. In addition, a Benelux trade mark can be cancelled when: • an agent or representative of the owner of the trade mark has applied for registration in his/her own name without the owner’s authorisation (unless justified); • an application for a protected designation of origin (PDO) or a protected geographical indication (PGI) had already been submitted (in some cases); or • there is a risk of dilution of a well-known trade mark. Revocation A Benelux trade mark can be revoked when:
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