Provisions Judge of the District Court of The Hague, Decision of 11 July 2011, No. KG ZA 11-599, VGB v. eBenefits B.V.

Obtaining evidence which is in the possession of the possible infringer used to be a difficult task for the IP owner in the Netherlands, but the IP owner's position significantly improved in recent years. The recent decision of the Provisions Judge of the District Court of The Hague is a good example of the new possibilities for IP owners.

eBenefits B.V. develops and exploits software programs related to employee benefits. It transferred the copyright to some of its programs to a third party, which then further transferred the copyright to VGB, a competitor of eBenefits.

When VGB noticed that eBenefits still sold some of these software programs (including EblPro and eBenefits 4.8) to customers through its website, VGB requested the Provisions Judge of the District Court of The Hague to issue an order for an evidentiary seizure at eBenefits.

The judge found that VGB had made sufficiently plausible that its copyright had been infringed or was threatened to be infringed and granted the order on an ex parte basis (i.e. without hearing eBenefits).

A bailiff instructed by VGB then successfully executed the evidentiary seizure. However, VGB did not automatically obtain access to the seized evidence.

VGB subsequently initiated preliminary relief inter partes proceedings, i.e. proceedings in which the alleged infringer (eBenefits) is heard, and claimed for an injunction against eBenefits as well as the permission to inspect the seized evidence.

The Provisions Judge granted the injunction with respect to the EblPro software program, as this infringement had not been disputed by eBenefits. It rejected the injunction with respect to the other programs, as infringement had been disputed by eBenefits and was not sufficiently proven by VGB.

The judge, however, found that there was sufficient reason to allow VGB an inspection of the seized evidence in order to further substantiate its infringement claims with respect to the eBenefits 4.8 program.

VGB had argued that the three software programs eBenefits sold on its website were infringing copies of eBenefits 4.8, as comments in the market indicated that these programs offered the same functionality as eBenefits 4.8 and customers could use the same login codes as before.

The judge said that, although there was no sufficient evidence for an injunction, VGB had put forward sufficient specific facts and circumstances, substantiated by reasonably available evidence to establish a reasonable suspicion of infringement and was, therefore, entitled to the inspection of the seized evidence through an independent expert. The judge explicitly pointed out that the threshold for proving infringement in the context of a claim for inspection of evidence for further substantiating infringement was lower than the threshold in the context of a claim for an injunction.

This decision shows that the District Court of The Hague allows the inspection of seized evidence if the IP owner put forward sufficient evidence to establish a substantiated, reasonable suspicion of infringement, even if this would be not sufficient for granting an injunction.

It is expected that the District Court of The Hague – which has exclusive jurisdiction over patent, Community design and Community trademark disputes in the Netherlands – will apply this approach to all types of intellectual property disputes. It therefore appears that the Netherlands is becoming an interesting jurisdiction for obtaining evidence of intellectual property infringement.