LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre and Florentine Frias, Elvinger Hoss Prussen
5.6 Amendment in Revocation/ Cancellation Proceedings
of the information provided, and provides the parties with a notification of admissibility. • Cooling-off period: there is a two-month period from the notification of admissibility, during which the parties are invited to reach an amicable settlement. • Exchange of arguments: after the end of the cooling-off period and if the parties did not reach an amicable settlement, each party has one round to submit arguments and support - ing documents, starting with the opponent. Where applicable, the applicant may request proof of use of the earlier trade mark. If the BOIP deems it necessary, it may request the submission of more arguments or documents for the purpose of hearing both sides of an argument. • Hearing: this is ex officio or at the request of the parties (provided that a hearing is consid - ered necessary by the BOIP). • Decision reached by the BOIP: if the opposi - tion is held to be justified or partially justified, the BOIP will refuse to register the trade mark in whole or in part. Otherwise, the opposition will be rejected. Revocation and cancellation actions related to trade marks can be brought before either the BOIP or the courts. However, the procedure will be suspended before the BOIP if the contested trade mark is the subject of a legal action for invalidity or revocation before a court. These actions may be requested in respect of all or some of the goods and/or services designated by the trade mark. 5.5 Legal Remedies Against the Decision of the Trade Mark Office The opposition decision rendered by the BOIP may be appealed to the Benelux Court of Justice within two months from the notification of the decision.
Before the BOIP, the claimant may amend or extend the grounds on which the request for invalidation or revocation is based in the course of the procedure, no later than the submission of its arguments. 5.7 Combining Revocation/Cancellation and Infringement If revocation or cancellation is invoked with infringement, the means of action will be heard together. 5.8 Measures to Address Fraud A trade mark is liable to be declared invalid if the registration was made in bad faith by the applicant. This will be the case when the trade mark application was made with the knowledge that the sign belongs to a third party, or when the application was made for punitive or block - ing purposes.
6. Assignments and Licensing 6.1 Assignment Requirements and
Restrictions Trade Marks
Benelux trade marks may be assigned for all or some of the goods and services for which they are registered. The assignment will become opposable against third parties only after its recordal on the BOIP register and the payment of the fees due. In practice, most transfers are put in writing. Assignment between living per - sons must be in writing; otherwise it will be null and void. If the assignment is not made for the whole Ben - elux, it will also be null and void.
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