Civil litigationi Forums
In the Netherlands, there is no specialised court for trademark disputes as there is in Germany and the United Kingdom, for example. However, most of the district courts and courts of appeal have judges more or less specialised in IP matters, including trademark matters. In addition, the District Court of The Hague has specialised judges because this court has exclusive jurisdiction in EUTM matters.ii Pre-action conduct
In the Netherlands, although not required by law, a cease-and-desist letter is usually sent prior to starting court proceedings (except if an ex parte injunction or seizure is requested). The aim of this letter is to immediately end the infringement, or to seek a settlement out of court. Furthermore, a response to the letter may provide insight into the possible counterarguments presented by the alleged infringer, which may help in assessing the strength of the case. Any such counterarguments must be included in the writ of summons served if, ultimately, legal proceedings are started. Failure to do so risks the claims being judged inadmissible.
For the purpose of settlement, the cease-and-desist letter usually contains demands that are similar to or go beyond those that can be obtained in interim relief proceedings, such as:
- immediately stopping the infringement;
- recognition of the rights holder’s rights, and desisting from future infringements;
- provision of an accountant’s statement to calculate damages, such as the number of products purchased and sold, turnover, costs and profit made;
- contact details of the supplier of the infringing goods; and
- an undertaking to pay damages and legal costs.
It may often also contain a penalty clause for each violation of the undertakings. In practice, more often than not, a settlement is reached on the basis of the demands in the cease-and-desist letter, which is usually a more cost-effective outcome for the parties than resorting to court proceedings.iii Causes of action
Court proceedings in trademark cases will usually be based on an alleged trademark infringement of the types discussed in Section III. Mostly, this will involve action against the use of an identical or similar sign for identical or similar products or services, causing risk of confusion. Less often, an action will be brought based on use infringing on a well-known trademark. The owner of a prior trademark or trade name can also initiate proceedings against the use of a confusingly similar trade name based on the Dutch Trade Name Act. In the case of a domain name, proceedings can be based on either trademark law or trade name law, depending on the infringed right concerned. Also, with regard to other unlawful acts, such as misleading advertising or unlawful copying of trade dress, an action can also be brought based on unfair trade practice, misleading advertising, unfair competition or unlawful act (tort) in general.iv Conduct of proceedings
The Dutch legal system does not have a concept of full discovery similar to that in the United States or similar jurisdictions. In any court case, the court will base its judgment only on the facts as presented to it by the parties. In trademark infringement cases, a plaintiff may opt for either summary proceedings or proceedings on the merits. Summary proceedings consist of a writ of summons by the plaintiff, including the claims and their factual and legal grounds, followed by a court hearing during which the case is pleaded by the legal representatives of the parties (or in the case of the defendant, in summary proceedings – this may be the defendant itself). Summary proceedings may take approximately six to 10 weeks from serving the writ until the judgment is rendered. A judgment obtained in summary proceedings based on trademark infringement must be followed by proceedings on the merits within a reasonable period determined by the court (in accordance with the TRIPS Agreement), usually six months, or (often) by the parties reaching a settlement based on the summary judgment.
Main proceedings are more elaborate and require at least one round of written arguments, by both plaintiff and defendant, and possibly a second round, and in most cases, these end with oral pleadings before a judgment is rendered. Main proceedings may also include incidents, in particular interim orders by the court regarding the provision of additional evidence, such as witness hearings or expert reports. Typically, the main proceedings, subject to incidents, may take between six and 12 months until judgment.v Remedies
A trademark holder may bring several claims, the most obvious claim being an injunction; that is to say, a court order to cease and refrain from any infringing acts. Other possible claims include a recall of infringing products from the market, and surrender or destruction of infringing products. Also, the infringer may be summoned to provide information, usually attested by an accountant’s statement, to enable the plaintiff to calculate the damage sustained as a consequence of the infringement, such as the number and price of products purchased and sold, the turnover, costs and profit made. In addition, it may be ordered to provide contact details of the supplier of the infringing goods. To ensure that the court order awarding any or all of these claims is executed, the court usually determines that an incremental penalty sum is forfeited if the infringer does not execute the court orders within a certain period, set by the court.
A rights holder may also claim compensation of damage, surrender of profit made from the infringement or compensation of legal costs incurred. A rights holder will need to substantiate the actual damage sustained (e.g., loss of profits) and demonstrate that this is attributable to the infringer. It is not possible to claim or obtain punitive damages in the Netherlands. Only the damage actually suffered may qualify for compensation.
In the case of a trademark infringement, a rights holder may bring a separate claim for surrender of profits made by the infringer from the sale of the infringing products. If the infringement is made in bad faith, both damage compensation and surrender of profit may be awarded cumulatively. A claim for damage compensation or a claim for surrender of profits may be brought in proceedings on the merits.
In both summary and main proceedings, a claim may be brought for (partial) compensation of legal costs incurred. Any party in legal proceedings concerning the enforcement of an IP right may claim compensation of all reasonable and proportionate legal costs and other expenses (such as expert reports and the cost of accountants) actually made. Dutch courts use guidelines for cost awards in IP proceedings (except patent cases), which, depending on the complexity of the case, vary from €6,000 to €15,000 for summary proceedings, to between €8,000 and €25,000 for main proceedings. If the parties have agreed on the cost award, the court usually awards the agreed amount to the prevailing party.
Other enforcement proceedings
Pursuant to the EU Anti-Piracy Regulation (Regulation (EU) No. 608/2013), it is possible for trademark owners to involve the customs authorities in the Netherlands to prevent counterfeit and other infringing goods from being imported into or exported from the EU market. At the request and instruction of a trademark owner, customs will monitor incoming shipments and involve the rights holder if they come across a shipment that is suspected to be infringing on the right holder’s trademark. Customs will provide photos and sometimes samples for the right holder to assess whether this is indeed the case. If so, the counterfeit goods can be seized and destroyed.
Under Dutch law, trademark infringement is also a criminal offence and, as such, it can be actioned by the public prosecutor as well as through a civil action by the trademark holder. However, it is at the discretion of the prosecutor whether or not to act upon a notification of infringement and, in practice, it will often be the case that priorities are different and the prosecutor does not opt to take action (except, perhaps, in cases of widespread infringements involving a criminal organisation or where public health is at real risk).