Transfer of IP rights in Belgium

A patent may be assigned to third parties. Such a transfer must be executed in writing and communicated to the Belgian Intellectual Property Office (Art. XI.50 of the Belgian Code of Economic Law).

The transfer of rights becomes opposable to third parties only upon its registration in the patent register.

The communication of the assignment to the Intellectual Property Office must be accompanied by a copy of the deed of transfer, by an extract of that deed, or by a transfer certificate signed by the parties.

An original supporting document is not required, a copy is sufficient.

The documents are to be submitted in French, Dutch or German. The supplementary documents (for example deeds and powers of attorney) may be submitted in English, provided they are accompanied by a translation into one of the three official Belgian languages.

The communication of the transfer must be executed by means of the form published on the website of the Intellectual Property Office.

The transfer of rights is only opposable to third parties when it is recorded in the patent register. The record in the patent register has a declarative effect.

Assignments require the consent of all proprietors.

When a co-owner expresses intent to transfer its share, the remaining co-owners are vested with a preemption right for three months as from the notification of the intended transfer (Art. XI.49 of the Belgian Code of Economic Law).

The appointment of a domestic professional representative is not required.

There are no fees for a patent assignment.

In general, there are exclusive and non-exclusive licences as well as compulsory licences.

Exclusive and non-exclusive licences must be executed in writing to be valid. They become opposable to third parties only upon their registration in the patent register (Art. XI.37 of the Code of Economic Law).

The Minister of the Economy is vested with the authority to grant compulsory licences, enabling the licensee to utilise the patent without obtaining the consent of the patentee (Art. XI.37 of the Code of Economic Law).

Compulsory licences may be granted, for instance, if the patent holder fails to exploit the patent or in specific circumstances related to public health.

The licence must be communicated to the Intellectual Property Office through a jointly signed certificate in the form imposed by the Office.

It must be accompanied by a copy of the licence agreement, an extract of the licence agreement or a licence certificate signed by the parties.

The documents must be submitted in French, Dutch or German. The supplementary documents (for example deeds and powers of attorney) may be submitted in English, provided they are accompanied by a translation into one of the three official Belgian languages.

The communication of the licence must be executed by means of the form published on the website of the Intellectual Property Office.

A licence is only opposable to third parties when it is recorded in the patent register. The record in the patent register has a declarative effect.

The appointment of a domestic professional representative is not required.

Yes, the patent holder can grant a pledge on the patent (Art. XI.52 of the Code of Economic Law).

To be opposable to third parties, the pledge must be recorded in the patent register, using the form provided by the Intellectual Property Office.

Note: The Netherlands, Belgium and Luxembourg have uniform rules for the protection of trademarks, which automatically offer protection in the three Benelux countries. The Benelux trademarks are governed by the Benelux Convention on Intellectual Property (“BCIP”). The Benelux Office for Intellectual Property (“BOIP”) is the official body for trademarks and designs registrations in the Benelux.

According to article 2.31 BCIP a trademark may be transferred, separately from any transfer of the undertaking, in respect of some or all the goods or services for which it is registered.

The assignment of the trademark must be in writing.

The assignment shall become opposable to third parties only after recordal of an extract of the assignment document or of a declaration signed by the parties, in the manner specified by the implementing regulations and following payment of the fees due (Art. 2.33 BCIP).

To record a trademark assignment, the following supporting documents are required: an extract of the deed showing the assignment (a purchase contract, an asset deal, a judgement) or a statement confirming the transfer signed by both parties.

A copy of the deed evidencing the assignment will suffice (Rule 3.1(4) of the Implementing Regulations).

If the Office has any reason to question the accuracy of the assignment, the Office may request further information, including the submission of original documents or certified copies thereof (Rule 3.1(4) of the Implementing Regulations).(a)   Translation requirements: all documents submitted to the Office should be drawn up in one of the Office’s working languages, being Dutch, French and English (Rule 3.3 of the Implementing Regulations). Documents evidencing the assignment of a Benelux trademark will also be accepted if they have been drawn up in German.

Documentary evidence may be submitted to Benelux Office using electronic means or other means accepted by the Director General (Rule 3.4 of the Implementing Regulations). The Director General has issued a document on the submission of supporting documents and means of evidence. As of 1 January 2021, the following conditions apply:

• all documents must be included in one bundle;
• the bundle of documents must have a table of contents containing at least: (i) the number of exhibits; (ii) a brief description of each exhibit; and (iii) a description of the facts evidenced by the exhibit;
• documents must refer to the exhibits in the bundle of documents and relevant passages in the exhibits should be highlighted or otherwise precisely marked. 

Not recording the trademark assignment means that the assignee cannot oppose the assignment to third parties (Art. 2.33 BCIP).

The record in the trademark register has a declarative effect.

The Benelux Convention does state that a trademark may be held by more than one proprietor. But in practice, a trademark can be held by more than one proprietor and the register will in that case mention the different names of the co-owners. 

The Benelux Convention allows a trademark to be assigned for only part of the goods or services for which it is registered (Art. 2.31). There are no particular formalities for a partial assignment.

The assignment of a Benelux trademark must always concern the entire Benelux territory. 

There is no need to appoint a domestic professional representative.

The fees for the assignment of a Benelux trademark are:

1. transfer of the first right: EUR 56;
2. transfer of the second to fifth right: EUR 28;
3. transfer of every additional right: free. 

A Benelux trademark may be licensed for some or all the goods of services for which it is registered and for the whole or part of the Benelux territory (Art. 2.32 BCIP).

A licence may be exclusive or non-exclusive.

The holder of a non-exclusive licence may not bring proceedings for infringement of a trademark without the consent of the proprietor of the trademark unless otherwise stipulated in the licence agreement.

The holder of an exclusive licence may bring such proceedings even without the consent of the proprietor of the trademark, if the proprietor of the trademark, after having been given notice, does not initiate infringement proceedings within a reasonable term.

According to article 2.33 BCIP a licence must be registered in the manner specified by the Implementing Regulations and a fee will be due.

A copy of the deed evidencing the licence will suffice (Rule 3.1(4) of the Implementing Regulations).

If the Office has any reason to question the accuracy of the assignment, the Office may request further information, including the submission of original documents or certified copies thereof (Rule 3.1(4) of the Implementing Regulations).

Translation requirements: all documents submitted to the Office should be drawn up in one of the Office’s working languages, being Dutch, French and English (Rule 3.3 of the Implementing Regulations). Documents evidencing the licnese of a Benelux trademark will also be accepted if they have been drawn up in German.

Documentary evidence may be submitted to Benelux Office using electronic means or other means accepted by the Director General (Rule 3.4 of the Implementing Regulations). The Director General has issued a document on the submission of supporting documents and means of evidence (cf. above). 

Not recording the trademark licence means that the licensee cannot oppose the licence to third parties (Art. 2.33 BCIP).

The record in the trademark licence has a declarative effect.

The Court of Justice of the EU, however, ruled that a licensee of a European Union trademark can take enforcement action even if its licence has not been registered, so long as the licensee has the trademark owner’s consent to assert such rights (judgment of 4 February 2016, case C- 163/15, Hassan). The Benelux Court of Justice had already ruled in the same way in its decision of 28 February 2003. 

A trademark may be the subject of a licence for all or some of the goods or services in respect of which it is registered (Art. 2.32(1) BCIP).

The trademark can be licensed for all or part of the Benelux. 

There is no need to appoint a domestic professional representative.

The fees for recording a trademark licence in the Benelux are:

1. the first right: EUR 56;
2. the second to fifth right: EUR 28;
3. every additional right: free. 

Yes, it is possible to pledge a trademark. According to Article 2.32bis (1) BCIP a trademark may, independently of the undertaking, be given as a security or be the subject of rights in rem.

The registration of the deed of pledge is not necessary for the validity of the pledge.

The pledge shall become opposable to third parties only after recordal of an extract of the pledge document or of a declaration signed by the parties, in the manner specified by the implementing regulations and following payment of the fees due (Art. 2.33 BCIP).

This also applies to the rights in rem.

The fees for recording a pledge in the Benelux are:

1. the first right: EUR 56;
2. the second to fifth right: EUR 28;
3. every additional right: free.