On 9 September 2008 the Director-General of the Benelux Organization for Intellectual Property (the Office) published some new rules with regard to the withdrawal of trade mark filings that the Office has refused to register on absolute grounds and with regard to the withdrawal of oppositions.

With regard to the withdrawal of trade mark filings refused on absolute grounds:

1. Filings refused on absolute grounds can be withdrawn before the decision of the Office becomes final, according to art. 2.11 par. 5 Benelux Convention on Intellectual Property (BCIP), which reads as follows: ‘Refusal shall only become final when the decision is no longer subject to appeal or, if appropriate, the decision of the appeal authority is no longer subject to referral to a high court of appeal.’
2. A filing which has been refused on absolute grounds can also be partially withdrawn before the end of the period for objections against the intention of the Office to refuse the registration (in whole or in part). For filings done before January 1, 2009 this period is at least one month and at the most six months after the date of service of the first notice of the refusal intention to the applicant. Partial withdrawal is no longer possible after the period for objections has expired as has been decided by the Benelux Court in the decision ‘Langs Vlaamse Wegen’(case A 2002/2).
Please note: for filings done on or after January 1, 2009 the period for objections will be three months. After expiration of this period the Office shall extend the period for objections with one month ex officio. Furthermore during a pending period for objections an extension can be requested.
3. If the refusal on absolute grounds concerns (only) a part of the designated goods or services the filing can only be withdrawn for those goods or services until the refusal decision becomes final according to art. 2.11 par. 5 BCIP.
4. A registrant who withdraws a refused filing after the period for appeal against the decision of the Office has started to run (art. 2.11 par. 4 BCIP: ‘If the Office’s objections against registration have not been lifted within the period laid down, registration of the trademark shall be refused in whole or in part. The Office shall inform the applicant in writing without delay, indicating the grounds for refusal, and advising of the remedy against that decision, referred to in Article 2.12 BCIP’), waives the right to appeal against the decision on the basis of art. 2.12 par 1 BCIP (‘Within two months following the communication referred to in Article 2.11(4), the applicant may lodge a petition with the Court of Appeal in Brussels, the Gerechtshof in the Hague or the Court of Appeal of Luxembourg with a view to obtaining an order for registration of the trade mark’).

With regard to the withdrawal of oppositions:

1. Opposing parties can withdraw oppositions until the decision of the Office, according to art. 2.16 par. 4 BCIP, becomes final (‘The Office’s decision shall only become final when it is no longer subject to appeal or, where appropriate, the ruling of the appeal court is no longer open to referral to a high court of appeal’).
2. The only effect of a withdrawal of an opposition after the Office has reached a decision is that the Office shall not execute its decision. The cost order of the Office however remains enforceable (art. 2.16 par. 5 BCIP: ‘Costs shall be borne by the losing party. They shall be fixed in accordance with the provisions of the Implementing Regulations. Costs shall not be due if an objection is partly successful. The Office’s decision concerning costs shall constitute an order. Its forced implementation shall be governed by the rules in force in the State on the territory of which it takes place’).