EnforcementTrademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
Civil actionsVarious civil actions can be taken in 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 seizureThe so-called ‘description seizure’ (usually referred to as ‘evidentiary seizure’ in the Netherlands) is an ex parte 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, such a deposit may, by law, be ordered by the president of the district court, but this 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.
Dutch law does not provide for injunction actions on the merits. 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 of an oral hearing. 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. Consequently, most judges assess the damages suffered ex aequo et bono once the infringement is established.
Administrative actions – customs levelAdministrative 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 Benelux country.
Once an application for action has been filed, the procedure provided for in EU Regulation 608/2013 will apply.
Criminal actions are also possible in Belgium, Luxembourg and the Netherlands. Trademark infringement and equivalent offences are indeed punished under Belgian criminal law.
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.Procedural format and timing
What is the format of the infringement proceeding?
In case of infringement the trademark owner can decide to launch a civil action (which lasts between one and three years depending on the attitude of the adverse party), a criminal action (which lasts between one and four years depending on the investigation and on the attitude of the infringer) or an administrative action (which can be really quick – eg, a few days for border seizures).
Civil actions follow these steps:
- issuance of a writ of summons;
- calendar for exchange of conclusions will be acted at a first hearing;
- scheduling of a hearing;
- pleadings; and
- judgment (or order under penalty).
In addition, while it is very uncommon to have testimony in civil proceedings, it is frequent for criminal proceedings.
The judge can order an expertise if it is needed to evaluate the damage or if some technical aspects require clarification.
Burden of proof
What is the burden of proof to establish infringement or dilution?
Although the burden of proof always lies with the plaintiff, the defendant must collaborate to the establishment of the truth. In criminal law, it will be up to the public prosecutor to prove that the offences are attributable to the infringer (material element of the offence). The public prosecutor will also have to prove the special fraudulent intent of the infringer (eg, profit motive of the infringer) for IP rights violations (moral element of the offence).Standing
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
Any interested party and even the public prosecutor (ex officio) can file a trademark infringement action.Border enforcement and foreign activities
What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?
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, the customs authorities detain the goods and notify the trademark owner or its representative, which must confirm the counterfeit nature of the seized goods.Discovery
What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
There is no discovery proceedings beside the mechanism of description seizure and the fact that a party may require that another party submit to the court a specific document which is proven to be in the possession of such party and relevant to rule on the dispute at stake. In practice, it will rarely apply to parties outside Benelux as this may raise execution issues.Timing
What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
The length of the period before the commencement of the trial varies depending on the pre-trial stages opted for by the claimant and the parties’ attitude, but in case of description seizure it may take a few months.
Injunctions and interim measures can be obtained within a few weeks/months before the president of a commercial court.
Proceedings on the merits may take around 18-24 months in order to obtain a ruling at first instance. An appeal must be lodged within one month of the date of serving the judgment to the other party. The typical timeframe for an appeal proceeding is at least one to two years, but can be longer in some jurisdictions or where an expert opinion is required (notably to assess damages).Limitation period
What is the limitation period for filing an infringement action?
A claim is time-barred after five or 10 years, depending on the infringement in question (contractual or extra-contractual).Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
The costs associated with an infringement or dilution action are €600 to €1,000 (and may be more in case of seizure description), not including attorneys’ fees.
The losing party will be ordered to pay the winning party’s legal fees. However, this is often symbolic.
In Belgium, judges are, in principle, not free to determine the amount of the procedural indemnity to be granted to the successful party. The procedural indemnity consists of a fixed amount determined by royal decree and mainly on the basis of the amount of the claim at stake.
Since the ruling of the Court of Justice of the European Union in United Video Properties Inc v Telenet NV of 28 July 2016, judges may order the full reimbursement of lawyers’ fees by the losing party in IP infringement cases, regardless of the applicable maximum procedural indemnity rate, if they consider this maximum cap not to allow for a “significant and appropriate part of the reasonable costs to be recovered”.Appeals
What avenues of appeal are available?
An appeal can be filed against a first instance judgment. The appeal procedure for trademark infringement cases is the same as the standard judicial procedure before a court of appeal. The appeal judge will examine the case on both facts and points of law.Defences
What defences are available to a charge of infringement or dilution, or any related action?
Infringers usually contest the validity of the trademark (eg, lack of distinctiveness, non-use). They also often contest that the product at stake infringes the relevant trademark rights, particularly on the basis of the freedom-of-trade principle. Infringers may also invoke the rules of exhaustion of rights or the inactivity of the prior trademark owner (ie, that it was aware, or could not reasonably not have known, of the existence of the infringing trademark and has tolerated it).Remedies
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?
Owners of infringed trademarks can seek the following remedies:
- injunctions against the infringer aimed at stopping the infringement under threat of a penalty in case of continued infringement;
- damages (only compensatory, no punitive damages);
- payment of the profits generated from the sale of the infringing goods if the bad faith of the infringer is established or if the circumstances of the case justify it;
- 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 that infringe the mark and of the materials or tools used to produce them;
- publication of the judicial decision or an extract thereof, 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.
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
ADR techniques are available in relation to disputes between trademarks and domain names. They are used whenever possible as they are fast and cost-effective. Such ADR techniques are, however, available only for specific situations (trademark and domain name conflicts).
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