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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

Material competence

The president of a commercial court is empowered to hear injunction proceedings in Belgium and the Netherlands. In Luxembourg, injunction proceedings are heard by the President of the District Court, as there are no specific separate commercial courts in Luxembourg.

Proceedings on the merits are heard by commercial courts or even criminal courts (or district courts in Luxembourg), where a criminal complaint has been filed and an application has been made to join proceedings as a civil party.

Territorial competence The territorial jurisdiction of the courts hearing trademark cases, unless expressly stated in a contract, will be determined by:

  • the address of the defendant;
  • the place where the obligation has been or should have been executed; or
  • the place where the infringement in dispute has arisen.

Where these criteria are insufficient to determine territorial jurisdiction, the petitioner owner of a Benelux trademark may bring the case before the competent court of its address for service or residential address; if the owner has no address for service or residential address in the Benelux territory, it may choose the competent court, be it Brussels, The Hague or Luxembourg.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Civil actions

Various civil actions can be taken in the Benelux against trademark infringement.

There are no Benelux courts at first instance and appeal. It will therefore be necessary to bring civil actions before the national courts of Belgium, Luxembourg or the Netherlands, depending on the issues at stake.

The primary civil actions are as follows.

Description seizure The so-called ‘description seizure’ (usually referred to as ‘evidentiary seizure’ in the Netherlands) is a unilateral procedure specific to intellectual property. The purpose of this procedure is to obtain evidence of the existence and extent of IP rights infringement. The procedure is initiated before the president of a commercial court (or before the president of the district court in Luxembourg) by a unilateral application (ie, without hearing the other party to maintain the effect of surprise). The president of the relevant commercial court will then appoint an expert who will be entitled to enter the premises of the supposed infringer and seize any items that may prove the infringement.

Two main conditions must be met in order to obtain an order for a description seizure:

  • The applicant must have an apparently valid IP right; and
  • There must be a serious and concrete suspicion of infringement or a threat of infringement of the IP rights at stake. Therefore, the request must be very specific; ‘fishing expeditions’ are not allowed.

In Belgium, the plaintiff will be asked to post a deposit in order to guarantee compensation for any damage suffered by the defendant, in particular if seizure of the alleged infringing items is sought. In the Netherlands, there is no such deposit requirement. In Luxembourg, this is a possibility that can be ordered by the president of the district court, but which is never done in practice.

Following the ordering of a description seizure and once the expert report has been delivered, the plaintiff must act on the merits of the case within the timeframe prescribed in the order or within a maximum period of 31 days.

Injunction action on the merits In Belgium, the plaintiff may also request an injunction from the president of the commercial court to order the cessation of the trademark infringement. This is the most commonly used procedure for IP disputes in Belgium. The advantage of this action is that the judgment rendered will not be provisional, but will settle the substance of the dispute. Injunctions are ordered under penalty. This is an effective way to oblige the defendant to immediately stop the infringement. The president of the court can take ancillary measures in addition to his or her injunction (eg, publishing the sentence or ordering the destruction of counterfeit goods). However, the jurisdiction of the president of the court is limited. For example, he or she cannot rule on the question of compensation for damages suffered.

In the Netherlands, the legal figure of an injunction action on the merits is unknown. Instead, a trademark holder can claim a provisional injunction in so-called ‘summary proceedings’. These summary proceedings need to be followed up by proceedings on the merits in order to uphold the order. A court order is usually rendered within two weeks after an oral hearing is held. In very urgent matters, an order can be issued on the same day as the hearing.  

In Luxembourg, there is no injunction action on the merits for trademark matters. However, the provisional cessation of an infringement can be requested in the frame of inter partes injunction proceedings brought before the president of the district court. The injunction must be followed by an action on the merits within the timeframe prescribed in the order or within one month.

Action on the merits including claim for damages  The action for claiming damages is the typical action used to obtain a decision on the substance of a case. The plaintiff must prove the damage suffered. It may be difficult to assess both economic and moral damages. As such, most judges assess the damages suffered ex aequo et bono once the infringement is established.

Administrative actions – customs level Administrative actions are not harmonised at the Benelux customs level. For this reason, in order to take action, an application for action must be filed in each of the three Benelux countries.

Once an application for action is filed, the procedure provided for in EU Regulation 608/2013 will apply.

Criminal actions Criminal actions are also possible in Belgium, Luxembourg and the Netherlands.

Owners or licensees can file a criminal complaint for infringement with the Economic Inspection or the police. Both have investigatory powers. If a complaint is lodged, the Economic Inspection or the police may:

  • initiate an investigation;
  • request the issuance of a search warrant;
  • record the offences; and
  • refer the case to the public prosecutor so that it can schedule the case before a criminal court once the investigation is completed.

However, the police, the Economic Inspection and public prosecutors have wide discretionary powers and are not obliged to pursue the case of every criminal complaint. Thus, the public prosecutor may close the case if he or she considers the matter to be of limited relevance.

In order to ensure that the case is investigated, the trademark owner must file its criminal complaint before the investigation judge with a formal civil claim. In such a case in Belgium, the trademark owner will have to pay a deposit to cover the costs of the investigation. In the Netherlands, there is no deposit requirement, and in Luxembourg the president of the district court may decide whether to order it or not.

Who can file a trademark infringement action?

Any interested party and even the public prosecutor (ex officio) can file a trademark infringement action.

What is the statute of limitations for filing infringement actions?

The ordinary regime of limitation of actions applies regarding the statute of limitations for filing infringement actions. This means that the statute of limitations for filing infringement actions is 10 years from the date of the act giving rise to the claim in Belgium and Luxembourg.

In the Netherlands, a trademark owner has to file an infringement action within five years after he or she became aware of the infringement, in order not to forfeit his or her rights. In criminal proceedings, the time limit for the prosecutor to take action against trademark counterfeiting is six years as of the date of the counterfeiting.

What is the usual timeframe for infringement actions?

The usual timeframe for infringement actions is as follows:

  • Description seizure – the order is pronounced within eight days of receipt of the request and the expert has two months to render its report. In the Netherlands, there are no fixed terms. The order is usually pronounced the day after filing. Subsequently, the trademark holder has the freedom to decide when to make the seizure. In some cases, a court may decide on this term (at its own discretion). After submission of this report, the plaintiff has 31 days (the law says one month in Luxembourg) to initiate an action on the merits.
  • Injunction action – the judgment is generally rendered between three and eight months after initiation of the case but it can be only in the Netherlands in case of summary proceedings.
  • Action on the merits including claim for damages – the timeframe for this action can range between one and two years at first instance, where there is no judicial expertise. It may take another three to four years (in the Netherlands it is one to two years, and in Luxembourg two to three years) if an appeal is lodged.
  • Customs actions – these are very fast, thanks to the simplified procedure provided under EU Customs Regulation 608/2013, and generally take 10 working days.
  • Criminal actions – the timeframe can be very long (approximately one to three years).

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Injunctions and interim measures can be obtained quickly before the president of a commercial court (or the president of the district court in Luxembourg within a few weeks, or even on the same day that a writ is served in very urgent cases). The plaintiff must establish the urgency of the case and obvious infringements of its rights.

However, as this possibility exists in Belgium, most trademark owners opt for injunction proceedings on the merits because, although this may take a few more weeks, they obtain a definitive judgment on the merits and need not establish the urgency of the case.

Further, in high-urgency cases and in the event of (the threat of) irreversible damages, there is also the possibility of ex parteproceedings. This procedure, in which the trademark owner can also ask for an injunction (which will usually be rendered the day after the application is filed), is initiated before the president of a commercial court (or district court in Luxembourg), without hearing the other party. 

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

Owners of infringed trademarks can seek the following remedies as provided under the EU directive harmonising trademark law:

  • injunctions against the infringer aimed at halting the infringement, which can be imposed under threat of a penalty in case of continued infringement;
  • damages;
  • payment of the profits generated from the sale of the infringing goods or services;
  • surrender of the infringing goods and the materials and tools used to produce them;
  • recall from the market, removal from the market or destruction of the goods which infringe the mark and of the materials or tools used to produce them;
  • publication of the judicial decision at the cost of the infringer; and
  • an injunction to provide all information with regard to the origin and distribution channel of the infringing goods and services.

Punitive damages are not allowed in the Benelux countries.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

Customs enforcement measures are available to halt imports or exports in Belgium, Luxembourg and the Netherlands. An application for customs action can therefore be sought in all three countries. The matter is regulated by the EU Customs Enforcement Regulation (608/2013), which provides for two types of customs action for cases of suspected counterfeiting:

  • ex officio actions (approximately 3% of all cases); and
  • actions based on earlier filed applications for action (approximately 97% of all cases).

Under both procedures, customs authorities detain the goods and notify the trademark owner or its representative, which must confirm the counterfeit nature of the seized goods.

If the trademark owner confirms the infringement, Customs will not release the goods and the goods will generally be immediately destroyed. If the declarant, holder or owner of the detained goods opposes the destruction, court proceedings (and in the Netherlands, prior to court proceedings, civil seizure of the goods) will need to be initiated to secure the seizure.

In the case of an ex officio action, the trademark owner has four working days to confirm the infringement. If an application for action has already been submitted, this is extended to 10 working days. This term can be extended with an additional 10 working days under certain conditions, notably in the Netherlands, if the trademark owner can demonstrate that he or she has started preparing further civil action.

Trademark owners can also ask for the name and address of the addressee and sender and take appropriate measures against them (eg, send a cease and desist letter requiring the voluntary release of the goods and the application of the simplified procedure provided for in EU Regulation 608/2013).

This simplified procedure under the EU Customs Regulation gives customs authorities the power to destroy the detained goods with no obligation for the applicant to initiate proceedings in order to have the alleged IP infringement confirmed by a court.

Significantly, under the simplified procedure, customs authorities may presume that the declarant, holder or owner of the detained goods has agreed to their destruction if it does not oppose the destruction within 10 working days of notification.

Small consignment procedure A ‘small consignment’ is defined as a “postal or express post consignment that comprises three units or less or has a gross weight of less than 2 kilograms”. Customs authorities now have the power to destroy small consignments of counterfeited goods without the need for the declarant, holder or owner thereof to give consent for each instance of destruction. Trademark owners need merely choose the small consignment procedure in their customs application form. 

Defence

What defences are available to infringers?

Infringers are always allowed to be heard and defend themselves. They usually contest the fact that the product at stake infringes the relevant trademark rights, particularly on the basis of the freedom of trade principle or the invalidity of the relevant trademarks. 

Appeal

What is the appeal procedure for infringement decisions?

Infringers are always allowed to be heard and defend themselves. They usually contest the fact that the product at stake infringes the relevant trademark rights, particularly on the basis of the freedom of trade principle or the invalidity of the relevant trademarks. 

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