Legal frameworkDomestic law
What is the primary legislation governing trademarks in your jurisdiction?
The registration of Benelux trademarks is governed by:
- the Benelux Convention on Intellectual Property (trademarks and designs) of 25 February 2005 (as last amended by the Protocol of 11 December 2017, which entered into force on 1 March 2019); and
- the Implementing Regulation under the Benelux Convention on Intellectual Property (trademarks and designs).
Trademark protection solely for the territory of Belgium, Luxembourg or the Netherlands is unavailable; successful trademark applications filed with the Benelux Office for Intellectual Property will result in protection for the entire Benelux territory. The advantage of such a system is that registrants automatically enjoy protection in at least three countries, although the risk of facing an opposition may be higher.International law
Which international trademark agreements has your jurisdiction signed?
The following international trademark agreements, conventions, regulations and directives apply in Belgium, Luxembourg and the Netherlands:
- the Paris Convention for the Protection of Industrial Property;
- the Madrid Agreement Concerning the International Registration of Marks;
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
- the Trademark Law Treaty;
- the Agreement on Trade-related Aspects of Intellectual Property Rights;
- the Benelux Convention on Intellectual Property;
- the Singapore Treaty on the Law of Trademarks;
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
- the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (signed by Belgium on 10 December 1973, but still not in force; signed by Luxembourg and the Netherlands and entered into force in both countries on 9 August 1985);
- EU Regulation 2017/10001 on the EU trademark;
- EU Commission Delegated Regulation 2018/625;
- EU Commission Implementing Regulation 2018/626; and
- EU Directive 2015/2436.
Which government bodies regulate trademark law?
The government body regulating Benelux trademark law is the Benelux Office for Intellectual Property, located in The Hague, Netherlands.
Registration and useOwnership of marks
Who may apply for registration?
Any individual or legal entity.Scope of trademark
What may and may not be protected and registered as a trademark?
Any names, drawings, imprints, stamps, letters, numerals, multimedia signs, holograms, sounds, shapes of goods or packaging and any other signs can be registered as trademarks as long as they can:
- be represented in the trademark register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to their proprietor; and
- distinguish the goods or services of an undertaking.
However, signs consisting solely of a shape, colour, smell and sound or any other characteristic that results from the nature of the goods, gives a substantial value to the goods or is necessary to obtain a technical result cannot be registered.
Marks are divided into:
- word marks – the names under which products or services are put on the market;
- figurative marks – logos, labels and (for example) words in a special font or which are presented in a special layout;
- figurative marks with word elements – their registration offers protection for the sign as a whole;
- shape marks – in certain cases, the shape of a product or packaging can be a mark (eg, a specially designed perfume bottle);
- colour marks – in exceptional cases, a single colour or a combination of colours can be a mark. This is the case when the public recognises a certain product or service by its colour (eg, the blue gas tanks used by CampingGaz);
- sound marks – advertising jingles are sometimes so well known that the public immediately recognises what they refer to on hearing them. In such cases, the relevant sound may be regarded as a mark and eligible for registration, in the form of musical notation;
- pattern marks – trademarks consisting exclusively of a set of elements that are repeated regularly (in a pattern);
- position marks – trademarks consisting of the specific way in which the sign is placed on or affixed to a product; and
- motion marks – trademarks consisting of, or extending to, a movement or a change in the position of the elements of the mark.
Collective and certification marks also exist under Benelux law.
A collective mark is a mark used by members of an association. The association is the owner of the collective mark and the mark is used to show that the products or services bearing it are provided by a member of the association. Typically, it is the type of trademark that associations of producers use – for example, a group of farmers from a particular region. A collective mark may serve as an indicator of geographical origin.
Under the Benelux Convention on Intellectual Property (BCIP), certification marks are signs capable of distinguishing, from other goods and services, goods or services that are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.Unregistered trademarks
Can trademark rights be established without registration?
Without registration, no protection is available unless the unregistered mark is a well-known trademark in the sense of Article 6bis of the Paris Convention.
In addition, Article 2.2bis§2 of the BCIP stipulates that a trademark cannot be registered in bad faith in the Benelux territory.
Foreign trademark registrations may find some protection in the Benelux under such provision.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
Yes, a well-known trademark is afforded protection if it is well known by the relevant public throughout a substantial part of the Benelux territory. The existence of an unregistered but well-known trademark in the sense of Article 6bis of the Paris Convention prevents the registration by a third party of that trademark or a trademark that is likely to create confusion, and entitles the owner to act in case of infringement. In addition, the person invoking this right should prove the risk of dilution of the well-known trademark and that the consumer is led to believe in the common origin of the two products or services.
A trademark with a reputation also enjoys protection as the owner can oppose the registration and prohibit the use of a later similar Benelux trademark for both similar and dissimilar goods or services if the later mark takes unfair advantage of, or is detrimental to, the distinctive character of the earlier trademark.The benefits of registration
What are the benefits of registration?
Registration offers the following benefits:
- It increases remedies for infringement;
- It gives access to specialised courts; and
- It gives access to border enforcement mechanisms against unauthorised goods.
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
An application for registration of a Benelux trademark can be filed in Dutch, French or English. The application should contain the following:
- the applicant’s name and address (if the applicant is a corporate body, its legal form should also be indicated);
- where appropriate, the agent’s name and address in the European Economic Area;
- the representation of the trademark in a manner that enables the competent authorities and the public to determine precisely and clearly the sign enjoying the protection;
- the list of goods and services that the trademark is intended to cover, including – as far as possible – the numbers and classes of these goods and services in accordance with the Nice Classification;
- an indication of whether the trademark is a verbal trademark, figurative trademark (including a good-quality image in jpeg format), semi-figurative trademark, form trademark or any other type of trademark (in which case, the type of trademark should be specified);
- an indication in words of the colour or colours of the mark, accompanied by the corresponding colour code where appropriate; and
- the (electronic) signature of the applicant or the applicant’s agent.
Trademark attorneys or law firms filing on behalf of trademark owners do not have to provide a power of attorney.
A description (in 50 words or less) of the distinctive elements of the trademark may also be included in the application.
Electronic filing is available and recommended.
Before filing the application, the applicant can search (free of charge) in the trademark register for all trademark applications and registrations that are valid in the Benelux territory. The applicant can thus check whether a mark is available. However, as this search is limited, it is advisable to conduct (with the assistance of a law firm or trademark agent) a complete search of prior registrations for signs that are identical or similar to the sign that the applicant seeks to register.
Searches are not mandatory, but are recommended in order to better assess the availability of the sign concerned.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
In general, it takes about three months for a trademark application to proceed to registration. Indeed, the exclusive right to a trademark comes into effect once the Benelux Office for Intellectual Property (BOIP) has registered the application. Before this, the trademark application must be published on the BOIP register for two months. The application is published only when the filing date has been determined and the goods and services have been correctly classified. The filing date is set as the date on which the minimal requirements have been fulfilled. The filing date is important for determining priority in regard to the applied-for trademark and the rights of any third party.
A trademark registration may take considerably longer if a third party opposes the application, if the BOIP provisionally refuses the trademark registration on absolute grounds or if some minimal requirements are missing in the application. The delay will then depend on the issue at stake and the behaviour of the parties involved.
In case of emergency, accelerated registration is available upon payment of an extra fee. In the event of an accelerated registration, the trademark will be registered as soon as the formal requirements have been met. This procedure can be completed within a few days.
Regarding the fees, a basic registration fee applies for one class (€244) and an additional fee will be added for each extra class of goods or services (€27 for the second class and €81 for each class from the third class). An accelerated registration of a trademark incurs an extra fee of €196 (in addition to the basic €244 fee), €21 for the second class and €63 per class from the third class. A basic fee of €379 applies for certification or collective trademarks and an additional tax will be added for each extra class of goods or services (€42 for the second class and €126 for each class from the third class).Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
The BOIP follows the international standard of the Nice classification system, which has a total of 45 categories (classes). A trademark application may be filed in multiple classes before the BOIP. However, supplementary fees apply for trademark registrations covering more than one class.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The BOIP assesses the following factors during the examination of the application:
- whether the documents provided by the applicant meet the filing requirements. The BOIP must ensure that the documents meet the conditions specified for setting the filing date. If any information is missing, the BOIP will inform the applicant without delay and in writing of the grounds for not setting a filing date and of the missing information;
- whether the applicant has paid the basic filing fees within one month of submission of the required documents; and
- absolute grounds of refusal – including the following grounds, which the BOIP examines ex officio:
- signs that cannot be represented in the register in a manner that enables the competent authorities and the public to determine precisely and clearly the sign enjoying the protection and distinguish the goods or services of an undertaking;
- signs that are not distinctive;
- signs that are descriptive;
- signs that are usual in the normal language or in common trade for the products or services for which the application is filed;
- shapes, colours, smells and sounds or other characteristics that result from the nature of the goods themselves, are necessary to obtain a technical result, or give a substantial value to the goods;
- signs that are immoral or contrary to public order;
- signs that consist of a flag or emblem protected under the Paris Convention;
- signs excluded from registration under EU law in relation to the protection of designations of origin and geographical indications;
- signs excluded from registration under EU law in relation to the protection of traditional terms for wine;
- signs excluded from registration under EU law in relation to the protection of traditional specialties guaranteed; and
- signs consisting of a denomination of an earlier registered plant variety.
The BOIP does not check for relative grounds of refusal. Thus, it does not check whether the mark violates any previous registered trademarks or whether other grounds for refusal exist.
The applicant can take certain measures to rectify the application when the BOIP raises objections to the application in the situations outlined below.
If certain documentary requirements have not been met, the applicant will be informed without delay and in writing to this effect and will be given the opportunity to remedy the situation.
Absolute grounds of refusal
If absolute grounds of refusal exist, the BOIP will notify the applicant in writing and without undue delay of the reasons for its intention to wholly or partially refuse registration. The BOIP will allow the applicant to respond to this notification (which can be extended on request, but may not exceed six months).
If the BOIP’s objections to the registration are not resolved within this period, the registration will be wholly or partially refused. The BOIP will notify the applicant of its refusal without undue delay and in writing, stating the grounds for refusal and mentioning the legal remedies against this decision.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
Non-use of a trademark or service mark has to be claimed before registration is granted. However, under Benelux law, a trademark can be revoked for non-use if, for a continuous period of five years since its registration, it has not been put to genuine use in the Benelux territory in connection with the goods or services in respect of which it was registered, and there are no proper reasons for this. Non-use is an argument raised in opposition proceedings by the defendant and is also a ground for revocation.
Foreign registrations can be granted rights of priority under Benelux law. There are two ways to claim such priority rights:
At time of filingIf the right to priority is claimed at the time of filing, the following elements of the original application on which the right of priority is based should be disclosed:
- the application form;
- the country in which the original application was filed;
- the application date;
- the application number; and
- the applicant’s name.
If the applicant in the country of origin is not the person submitting the Benelux filing, the latter must include a document establishing its rights in the Benelux application.
Within one month of filingA right of priority may also be claimed in the month following filing by means of a special declaration submitted to the BOIP against payment of relevant fees.
The special declaration of the right of priority must contain the name, address and signature of the applicant or its agent or, where appropriate, the agent’s name and address and an indication of the trademark and the information mentioned above.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
There are no specific words or symbols used under Benelux law to indicate trademark use or registration. Such marking are therefore not mandatory and have no specific benefits under Benelux law besides the clear indication that the trademark is registered.Appealing a denied application
Is there an appeal process if the application is denied?
It is possible to lodge an appeal directly before the Benelux Court of Justice against a BOIP decision to reject an application within two months of the notification of refusal on absolute grounds.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
The applicant or owner of a prior trademark may file an opposition before the BOIP within two months of publication of an application. After registration of the trademark, it is also possible to request the cancellation of a Benelux trademark or of an international trademark designating the Benelux in an administrative procedure before the BOIP or before the Benelux Court of Justice.
Grounds for opposition
An interested party can file an opposition when:
- an application has been submitted for an identical trademark for the same products or services;
- an application has been submitted for an identical or similar trademark for the same or similar products or services, which may cause confusion in the relevant public;
- an application has been submitted for identical or similar trademark for other products or services, taking unfair advantage of or infringing the distinctiveness or the reputation of the existing trademark;
- a more recent trademark may cause confusion with a well-known mark, as referred to in Article 6bis of the Paris Convention;
- a more recent trademark is open to opposition by the owner of a protected geographical indication; or
- a more recent trademark application was filed by an agent (a representative) in his or her own name without the authorisation of his or her client (proprietor of the trademark).
Grounds for cancellation
An earlier trademark owner can start a cancellation procedure if:
- an identical trademark has been filed in respect of the same products or services;
- an identical or similar trademark has been filed for the same or similar products or services if there is a likelihood of confusion on the part of the public;
- an application has been filed for an identical or similar trademark for other products or services, taking unfair advantage of or infringing the distinctiveness or the reputation of the existing trademark; or
- a later trademark may cause confusion with a well-known trademark as referred to in Article 6bis of the Paris Convention.
Any party (not just trademark owners) can start a cancellation procedure if:
- the trademark is descriptive;
- the trademark is not distinctive;
- the trademark is misleading;
- the trademark contains a flag, coat of arms or any other official emblem of a state or an international organisation that is protected under Article 6ter of the Paris Convention;
- the trademark infringes other IP laws, such as design and patent laws. The law frames this as follows: a shape or another characteristic of a product (eg, a sound) cannot be a trademark if it is determined by the nature of the goods, gives substantial value to the goods or is necessary to obtain a technical result. In many cases, such a shape or other characteristic also lacks distinctive character;
- the trademark is contrary to public order and morality;
- the trademark has not been used normally for a period of five years;
- the trademark refers to a protected geographical indication, traditional term for wine or traditional speciality guaranteed;
- the trademark is very similar to a protected, earlier plant variety denomination;
- the trademark was applied for in bad faith; or
- the trademark application was filed by an agent (a representative) in his or her own name without the authorisation of his or her client (proprietor of the trademark).
The basic fee to lodge an opposition before the BOIP is €1,045.
The basic fee to lodge a cancellation procedure before the BOIP is €1,420.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
The term of protection of a Benelux trademark is 10 years. It is possible to renew the registration for consecutive 10-year periods. Six months before the 10-year period expires, the BOIP will notify the owner. Renewal will take place only on payment of the renewal fee. No additional documents or steps are required. The use of a trademark is not strictly necessary during the first five years after registration. After such a period, a trademark might be the subject of cancellation proceedings if it is not put to genuine use during an uninterrupted period of five years.Surrender
What is the procedure for surrendering a trademark registration?
Surrendering a trademark is a relief that can be sought before the president of a commercial court through an action for an injunction. The competent commercial court in trademark cases is determined by the address of the defendant or the place where the obligation in dispute has arisen or has been or should have been executed.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
A trademark as such cannot be protected by another IP right, but the sign that it covers can benefit from the protection granted by the Paris Convention or unfair competition law under specific conditions.
An unregistered three-dimensional (3D) trademark can benefit from the protection granted to unregistered designs under the EU Community Designs Regulation (6/2002) if it meets the conditions laid down by the regulation or through its registration under the conditions laid down by the Benelux Convention on Intellectual Property.
A word, slogan or 3D representation subject to a trademark can also be protected by copyright if the conditions for such protection are met.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
If a trademark has been violated as a result of the registration of a certain ‘.nl’ domain name, an action can be brought before any relevant court or the Dutch Foundation for the Registration of Domain Names, which is responsible for issuing ‘.nl’ domain names and for mediation regarding ‘.nl’ domain names.
Licensing and assignmentLicences
May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?
It is not mandatory to record a licensing agreement in order for it to have effect between the parties, but a licence is enforceable against third parties only when the following conditions are met:
- A written document establishing the licence has been filed at the Benelux Office for Intellectual Property (BOIP);
- The status of licensee has been published in the Benelux Trademark Register; and
- The publication fees have been paid to the BOIP.
After recording, the licensee becomes entitled to act jointly with the licensor or independently, with the licensor’s permission, in cases of trademark infringement and to claim damages.
A licence can be limited to one of the Benelux countries.
A written licensing agreement should include at least the following information in order to avoid disputes as to its content:
- the names of the parties;
- the concerned Benelux trademarks and relevant classes of goods or services;
- the territory covered (a licence can be limited to one of the Benelux countries);
- the law firm involved and its official address;
- the duration of the licence;
- the scope of use under the licence;
- whether the licence is exclusive or non-exclusive;
- the amount or percentage of royalties payable;
- the right to sub-license (if any); and
- the ability to transfer the rights and obligations of the agreement (if any).
For the purpose of the recording, a mere declaration referring to the licensing agreement that mentions only the trademarks concerned and the goods and services and territory covered, and that is signed by both parties, can be submitted to the BOIP.
Quality control is not required, but it is advisable to provide for an audit section in the licensing agreement.Assignment
What can be assigned?
A trademark with or without goodwill can be assigned to another party. It is not mandatory to assign other business assets in order to make such transaction valid. It is possible to assign it for only some of the goods and services covered, but in such situation it is advisable to define precisely the rules of coexistence. The assignment should however cover all three Benelux countries. It is not possible to assign a trademark for only one of these countries before the BOIP.Assignment documentation
What documents are required for assignment and what form must they take? What procedures apply?
It is not mandatory to record the assignment in order for it to have effect between the parties. However, in order to be enforceable against third parties, the assignment must be registered and published in the Benelux Trademark Register. In such case, a mere extract of the assignment contract or a declaration signed by the parties must be submitted to the BOIP.Validity of assignment
Must the assignment be recorded for purposes of its validity?
The assignment must be recorded in order to be enforceable against third parties.Security interests
Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?
A security interest can be registered over a trademark. The same rules for licensing agreements apply. This means that the security interest is enforceable against third parties only when the following conditions are met:
- A written document establishing the security interest has been filed at the BOIP;
- The security interest has been published in the Benelux Trademark Register; and
- The relevant fees have been paid to the BOIP.
In addition to registration before the BOIP, national law may also require registration in the relevant standard national register.
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).
Update and trendsKey developments of the past year
Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?
A number of important amendments to Benelux trademark law were introduced in 2019.
The key changes can be summarised as follows:
- Owners of trademarks ‘with a reputation’ may now oppose a new trademark application in Benelux on the basis that the newer mark takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the established trademark;
- The BOIP has introduced a new administrative procedure to request the cancellation of a trademark;
- Appeals against BOIP decisions must now be brought before the Benelux Court of Justice;
- As from 1 January 2019, the Benelux legislator has abandoned the ‘three classes for the price of one’ fee system for a ‘one fee per class’ system as exists for EU trademarks; and
- Certification trademarks were explicitly included from the Benelux trademark system and be distinguished from collective trademarks.
Law stated dateCorrect on
Give the date on which the information above is accurate.