NETHERLANDS Law and Practice Contributed by: Radboud Ribbert and Wouter van Wengen, Greenberg Traurig, LLP
with a registered geographical indication or a protected designation of origin. 4.11 The Madrid System The Netherlands is a party to the Madrid system. It does not provide for any specific additional requirements aside from holding a valid regis - tration to base the international registration on. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Parties are permitted to file an opposition to a trade mark application within two (BOIP) or three (EUIPO) months of the publication of the trade mark application in the relevant register. There is no extension possible for this deadline. How - ever, note that the filing of an opposition does not immediately require substantiating of the opposition. Upon expiration of the opposition period, the applicant and opposing party enter into a cooling-off period of two months to reach an amicable solution. 5.2 Legal Grounds for Filing an Opposition or Cancellation Opposition can be based on relative and abso - lute grounds, such as the similarity of the trade mark to existing trade marks, likelihood of confu - sion, lack of distinctiveness, or violation of earlier rights. It is also possible to base the opposition on dilution; ie, the “whittling away” of the dis - tinctiveness of a trade mark that does not cause confusion. 5.3 Ability to File an Opposition or Revocation/Cancellation Only the opponent that holds a trade mark reg - istration or a licence thereto may file for registra -
tion. The opponent does not require representa - tion for the opposition proceeding. 5.4 Opposition or Revocation/ Cancellation Procedure Unlike in the US legal system, there is no discov - ery phase in the opposition procedure. It is the responsibility of each party involved in the oppo - sition to present the relevant evidence. As such, the proceedings are ruled in a “closed universe” of evidence. While there can be a hearing as part of the opposition process, it is not a default or mandatory part of the procedure. 5.5 Legal Remedies Against the Decision of the Trade Mark Office The parties can appeal the decision by the respective office within two months of the noti - fication of the decision. The party files the appeal with the board of appeals of the respective office. 5.6 Amendment in Revocation/ Cancellation Proceedings Amendment of the trade mark registration dur - ing the cancellation proceedings is not possible, since it is not possible to make material changes after registration of the trade mark. 5.7 Combining Revocation/Cancellation and Infringement Combining actions involving revocation/cancel - lation and infringement is only possible in cases heard before the civil courts. However, if the pro - ceedings are initiated before the respective trade mark offices, it is not possible to bring a claim for infringement. In terms of timing, if the infringe - ment and cancellation are handled in two differ - ent proceedings, the civil court may decide to stay a decision on infringement until the respec - tive trade mark office has made a decision on the cancellation. However, the civil courts are under no strict obligation to do so.
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