Trade Mark Litigation

The Netherlands

Brinkhof Kurt Stöpetie, Dirk Straathof and Ivo de Nooijer

1. Sources of Law

1.1 What are the principal sources of law and regulation relating to trade marks and trade mark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties).

Trade mark law
The Netherlands does not have national trade marks as such. The ‘national’ trade mark is the Benelux trade mark. A Benelux trade mark grants a right for the whole territory of the Benelux, ie Belgium, the Netherlands and Luxembourg.
The principal source of law for Benelux trade marks is the 2006 Benelux Treaty on Intellectual Property (‘BTIP’ or Benelux Verdrag inzake de Intellectuele Eigendom). The BTIP covers major subjects such as the requirements for obtaining a trade mark, opposition, cancellation and invalidation, infringement, territorial jurisdiction, remedies, licensing and ownership. The BTIP gives effect to Directive 1989/104/EEC to approximate the trade mark laws of the member states of the European Union (‘EU Trade Mark Directive’).
International trade marks that are filed or registered for the Benelux territory are subject to the BTIP.
Community Trade Marks (CTMs) are governed by the 1993 Community Trade Mark Regulation EC/40/1993 (‘Community Trade Mark Regulation’).

Trade mark treaties
The Netherlands are party to both the 1891 Madrid Agreement and the 1989 Madrid Protocol. Other relevant international treaties that have been signed and ratified by the Netherlands are the 1883 Paris Convention, the 1994 TRIPs Agreement, the 1957 Nice and 1973 Vienna Classification Treaties and the 1994 Trade Mark Law Treaty. The Netherlands has not yet signed the 2006 Singapore Treaty on the Law of Trade Marks.

Legal procedure
The principal source of law for litigation in general, including trade mark litigation, is the Dutch Code of Civil Procedure (‘CCP’ or Wetboek van Burgerlijke Rechtsvordering). The relevant provisions of the Directive 2004/48/EC on the enforcement of intellectual property rights (‘EU Enforcement Directive’) have been implemented in the CCP as of 1 May 2007.
In disputes involving a European party outside of the Netherlands the following regulations are relevant:

Regulation EC/1348/2000 concerning the service in the member states of judicial and extrajudicial documents in civil or commercial matters (the ‘EU Service Regulation’); and
Regulation EC/44/2001 concerning the recognition and enforcement of judgments in civil and commercial matters (and the preceding treaties on the same subject).

The competent court in The Hague has exclusive jurisdiction in the Netherlands for all matters concerning CTMs; for Benelux trade mark issues the competency of the court is determined by the principles laid down in BTIP and CCP.
Anti-Piracy
Regulation EC/1383/2003 concerning customs action against goods suspected of infringing certain intellectual property rights or Anti-Piracy Regulation (‘APR’) is applicable in trade mark cases.

Case law
Court precedents are non-binding, apart from those of the Netherlands Supreme Court. The courts are also obliged to follow the decisions of the European Court of Justice (‘ECJ’) and the Benelux Court of Justice (‘BCJ’)

1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?

International treaties prevail over Dutch law and acts prevail over regulations of Dutch governmental bodies. EU regulations have immediate effect in the Netherlands. EU directives need to be implemented in Dutch law, but if the wording of a provision of a directive is sufficiently precise and not conditional, it will be applied in the Netherlands without implementation, provided that the effect will not be contrary to the text of Dutch law.

2. Court and Administrative System

2.1 Can third parties oppose/request cancellation of a national or supranational (eg Benelux, Madrid Agreement and Protocol, Community Trade Marks) trade mark application/registration in your country? If so, on what grounds? Please briefly describe the opposition/cancellation procedure(s).

Opposition
The trade mark owner or applicant can oppose a younger Benelux trade mark or application. The grounds for opposition are:

the younger trade mark is identical and the goods or services are identical;
the younger trade mark is identical or similar and the goods or services are identical or similar, such that there exists a likelihood of confusion; or
there exists a likelihood of confusion with a well-known trade mark within the meaning of article 6bis of the Paris Convention.

Opposition proceedings must be initiated before the Benelux Office of Intellectual Property (‘BOIP’), within two months as of the month in which the application is published. Opposition proceedings usually take about 18 months. Opposition decisions can be appealed within two months as of the day of the decision. Depending on the domicile of the applicant, the court of appeals of Brussels, The Hague or Luxembourg is competent. If the applicant has no domicile within the Benelux, the domicile of the opponent is decisive.
An international trade mark application (on the basis of Madrid Agreement and Protocol) designating the Benelux can be opposed on the same grounds and following the same procedure as an opposition against a Benelux trade mark application.
Opposition against a CTM application can only be initiated before the Office for Harmonisation of the Internal Market (‘OHIM’). The procedure is entirely governed by the provisions laid down the Community Trade Mark Regulation and relating administrative regulations and guidelines.

Cancellation
Any interested party can request cancellation of a Benelux trade mark registration or the Benelux part of an international registration. The grounds for cancellation are:

the trade mark has not been put to genuine use on the Benelux market in connection with the goods or services, for which it is registered, during the last five years, and there are no proper reasons for non-use (‘non-usus’);
due to acts or inactivity of the owner, the trade mark has become a generic designation in the course of trade for a product or service in respect of which it is registered;
in consequence of the use made of it by the owner, or with its consent, with respect to the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

Cancellation proceedings are civil proceedings and must be initiated before the competent district court. Cancellation of a CTM can be requested to the OHIM or the competent Community Trade Mark courts.

2.2 In which courts are trade marks enforced? Are they specialised trade marks courts? If not, what level of expertise can a trade mark holder expect from the courts?

Benelux trade marks are enforceable through civil courts and penal courts, although the latter is rare. The commercial division of the district court deals with trade mark disputes, and these divisions have a broad expertise of trade mark issues. The commercial division of the district court of The Hague has a chamber of judges specialised in IP law.

2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?

Court precedents are non-binding, apart from those of the Netherlands Supreme Court. The courts are also obliged to adhere to decisions of the ECJ and BCJ.
Dutch courts are likely to consider judgments or opinions of foreign courts in cases wherein the same trade mark and/or same parties were involved. Especially decisions from the major European jurisdictions carry weight in this respect.

2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or national or supranational government agency shall they be brought (eg the national Trade Mark Office or the OHIM in Alicante)?

Infringement and invalidity can be dealt with simultaneously. Invalidity can be raised as:
(i) a defence in infringement proceedings; (ii) a counterclaim in infringement proceedings; or (iii) a claim in separate proceedings.
Invalidity of a Benelux trade mark can be addressed by a competent civil court. Invalidity of a CTM can be addressed by the OHIM or by a competent Community trade mark court.

2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?

In civil proceedings parties can only be represented by a Dutch lawyer, except in preliminary proceedings, where the defendant may choose to appear in person.
In opposition proceedings before the BOIP and the OHIM parties may act in person, provided they are domiciled within the European Economic Area, or by representation of, for instance, a Benelux or European trade mark agent or lawyer.

2.6 What is the language of the proceedings? Is there a choice of language?

Court proceedings are conducted in Dutch. Opposition proceedings before the BOIP are conducted in either Dutch or French. As a general rule the language of the proceedings will be the language used in the trade mark application which is being opposed. For an international trade mark application, the defendant may choose between French, Dutch or English.

3. Substantive Law

3.1 To what extent are unregistered trade marks protected under your country’s laws?

Only registered trade marks are protected under the BTIP. An exception is made for reputed trade marks within the meaning of article 6bis of the Paris Convention. The above does not prejudice a possible action based on trade name infringement or unfair competition, while prior use in good faith is sometimes protected against use of infringing signs (see 3.7 below).

3.2 How is trade mark infringement assessed? Does protection extend to translations or to conceptually identical but graphically different trade marks?

Trade mark infringement is assessed in line with the main criteria set by the ECJ, notably in the cases Puma v Sabel (11 November 1997), Canon v Cannon (29 September 1998) and Lloyd v Klijssen (22 June 1999). The likelihood of confusion is appreciated globally, taking into account all relevant factors, notably the degree of similarity between the trade mark and the sign, the degree of similarity between the goods or services, the repute of the trade mark, the degree of distinctiveness and the relevant public’s level of attention in relation to the goods or services concerned. There is interdependence between the relevant factors, such that a ‘higher’ score on one factor may compensate a ‘lower’ score’ on another factor. There is a likelihood of confusion when the public may believe that the goods or services originate from the same undertaking or from economically linked undertakings.
By law, the protection of a Benelux trade mark extends to its translations in the other official Benelux languages (ie Dutch, French and German). Whether the protection is extended to non-Benelux languages, is left to the court’s discretion and will vary from case to case. Protection may be extended to conceptually identical but graphically different trade marks.

3.3 Are there other causes of action for trade marks (eg dilution)?

Dilution can be a cause for an action against trade mark infringement. The owner of a reputed Benelux trade mark may oppose the use of an identical or similar sign which, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. The ECJ has confirmed that the required repute for a Benelux trade mark must exist in at least one of the Benelux countries.
Dilution may also be argued when the infringing sign is not used as a trade mark; provided that this use is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. Examples of such other use may be the registration of a domain name or the use of a trade name similar to the trade mark.

3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?

Where a domain name, a trade name, a pseudonym or any other sign is used as a trade mark, a trade mark owner can oppose such use following the infringement criteria as described above.
Where such signs are not used as a trade mark, the trade mark holder must rely on the criteria set in relation to other use as meant in article 5(5) EU Trade Mark Directive. This requires that the conflicting sign is used without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. As to domain names it is widely accepted that the mere registration may cause a trade mark infringement under this provision.

3.5 On what grounds can a trade mark be invalidated?

The main grounds for invalidation are:

the trade mark cannot be represented graphically or is incapable of distinguishing an undertaking’s goods or services;
the trade mark is a sign which consists exclusively of a shape:
– which results from the nature of the goods themselves;
– which gives substantial value to the goods or;
– which is necessary to obtain a technical result;

the trade mark is devoid of any distinctive character;
the trade mark consists exclusively of signs or indications which may serve, in the course of trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

the trade mark consists exclusively of signs or indications which have become customary in the contemporary language or in the bona fide trade practices;
the trade mark is contrary to public policy or to accepted principles of morality or is to be refused or invalidated pursuant to article 6ter Paris convention;
the trade mark may deceive the public, eg as to the nature, quality or geographical origin of the goods or service;
there exists an older identical trade mark registered for identical goods or services;
there exists an older identical or similar trade mark for identical or similar goods or services, such that there exists a likelihood of confusion;
there exists an older identical or similar reputed trade mark in the Benelux, such that the use – without due cause – of the younger trade mark takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the older trade mark;
there exists a likelihood of confusion with a well known trade mark in the sense of article 6bis of the Paris Convention used for identical or similar goods or services; or
the trade mark was applied for in bad faith.

3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?

There is no use requirement to maintain a trade mark registration, but failing to use a trade mark bears the risk that an interested party asks for cancellation of that registration. A court will only assess whether the use requirements have been met if the court is explicitly asked to do so.
The BTIP gives some examples of what falls under the definition of use as such:

use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;
affixing the trade mark to goods or packaging solely meant for export purposes;
use of the trade mark by a third party with the consent of the trade mark owner.

The relevant criterion is ‘genuine use in the course of trade’. To determine this, Dutch courts follow the criteria set by the ECJ, notably in the cases Ansul v Ajax (11 March 2003), La Mer Technology v Laboratoires Goemar (27 January 2004) and Sunrider v OHIM (11 May 2006). These criteria can be summarised as follows. Genuine use implies a real commercial exploitation of the trade mark in order to create or preserve an outlet for those goods or services under that trade mark. Excluded is token use for the sole purpose of preserving the rights conferred by the trade mark or use that cannot be considered as use as a trade mark. There are no quantitative criteria. Even minimal use of the mark or use by only a single importer may be sufficient to establish genuine use, depending on the nature of the goods for which the mark is registered.

3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?

The Benelux trade mark owner’s rights are limited by law. A trade mark shall not entitle the owner to prohibit a third party from using in the course of trade:

his own name or address;
indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or service;
the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts;
a similar sign based on an earlier right which only applies in a particular locality if that right is recognised by the laws of one of the Benelux countries; or
the trade mark in relation to goods which have been put on the market in the Community under that trade mark by the owner or with its consent.

An alleged infringer may invoke the above limitations of the trade mark owner’s rights to contest the infringement.
The BTIP provides for prior use rights. The prior user who is confronted with a trade mark infringement claim may invoke invalidation of the trade mark if the owner had or should have knowledge of the use in the Benelux of a similar trade mark for similar goods or services within the last three years, in short, if the trade mark was applied for in bad faith.
In addition to that, the BCJ acknowledged in its decision Unilever v Artic (25 June 2004) the right of ‘prior-prior-use’. The applicant is not acting in bad faith if it already used the trade mark before the prior user did.

3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?

A trade mark owner can be held liable for an antitrust violation, notably if it is established that it has abused a dominant position in the relevant market. This should be assessed in accordance with the EU and national anti-competition legislation. There are no precedents so far.

3.9 Can a court only partially invalidate a trade mark?

Where grounds for cancellation or invalidation exist in respect to only some of the goods or services for which the trade mark is registered, the rights of the owner shall only be cancelled or invalidated in respect of those goods or services.

3.10 Is it possible to amend a registered trade mark during a lawsuit?

The only possible amendment a trade mark holder can make is in relation to goods or services for which the mark is registered. A request for such a partial cancellation may at all times, also during a lawsuit, be submitted to the BOIP. Amendment of the mark itself is not possible. It is, however, possible to apply for trade mark protection during a lawsuit.

3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder, or for some other reason (eg expiry of time limit)?

The owner of an earlier trade mark who has acquiesced, for a period of five successive years, in the use of a later trade mark registered in the Benelux while being aware of such use, shall no longer be entitled on the basis of the earlier mark either to apply for invalidation of the later trade mark or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith.
The statute of limitations as laid down in the CCP bars all civil claims after 20 years, with respect to damages this period is five years.

3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?

A trade mark owner can at the same time claim both trade mark infringement and unfair competition for the same set of facts and it is possible to bring parallel unfair competition proceedings, regardless whether the trade mark is registered. However, pursuant to the BTIP, no one, except for the owner of a reputed trade mark in the sense of article 6bis of the Paris Convention can claim protection for an unregistered sign as if it were a registered trade mark.

4. Parties to Litigation

4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?

Only the trade mark owner can sue for trade mark infringement, in which case a registered licensee can intervene to claim damages. The trade mark owner may authorise a licensee to conduct infringement proceedings on his behalf and to claim damages and invoke other enforcement rights, appropriate to protect the licence granted.

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?

An alleged infringer can obtain a declaratory judgment of non-infringement either by lodging a counterclaim in infringement proceedings or by initiating separate proceedings. A declaratory judgment can only be obtained in proceedings on the merit.

4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?

Everyone can be sued for infringing trade mark rights. However, company directors can, in principle, not be sued personally. This is only possible under specific circumstances.
A preliminary injunction can be obtained not only against the infringer, but also against intermediaries whose services are used to infringe trade mark rights.

4.4 Is it possible to add or subtract parties during litigation?

Parties can serve a third-party notice on someone during litigation. This is the only way third parties can be added against their will during litigation. Any interested party may petition to join in or intervene in proceedings of their own accord. However, it is up to the court to decide if it allows the addition.
As long as the defendant has not submitted his statement of defence, the claimant can choose to withdraw from the proceedings. If a claimant withdraws, it is obliged to pay for the defendants’ litigation costs, see below for details on these costs.

5. Enforcement Options

5.1 What options are open to a trade mark holder when seeking to enforce its rights in your country?

The trade mark owner can either initiate civil proceedings against the alleged infringer or request the public prosecutor to start criminal proceedings. The latter form of action is uncommon in the Netherlands.
Prior to civil proceedings, the trade mark owner may ask for preliminary measures, such as seizure of allegedly infringing goods and production means, as detailed below.

5.2 Are criminal proceedings available? If so, what are the sanctions?

The intentional selling, offering, trading, etc of counterfeit products constitutes a criminal offence, punishable by imprisonment or a fine. In criminal court a defendant may claim invalidity of the trade mark, although this has no effect on the actual registration, it is an exculpatory defence and has been sanctioned by the BCJ in Public Prosecutor v De Laet (23 December 1985). A conviction in criminal court does not automatically create liability of the defendant in civil court.

5.3 Are border measures available?

Border measures are available following the provisions of the APR. The procedure can be summarised as follows. The trade mark owner may request the customs authorities to seize the allegedly infringing goods and to provide him with the name and address of the consignee, the consignor, the declarant or the holder of the goods and information on the origin and provenance of the goods. The trade mark owner is granted a ten-day term either to obtain consent from the above parties to destroy the goods, or to initiate civil proceedings. The term may be extended once for another ten days. If the customs authorities do not timely receive said consent or the confirmation that proceedings have been initiated, the customs authorities will release the goods.

5.4 To what extent are courts willing to grant cross-border or extra-territorial injunctions?

The BCJ confirmed in Renault v Reynolds Aluminium Holland (13 June 1994) that an injunction based on a Benelux trade mark applies in principle to all three countries of the Benelux, regardless whether this is explicitly requested. The court, at its discretion, may limit the effect of the injunction to a part of the Benelux.
The Supreme Court opened the door in Lincoln v Interlas (24 November 1989) to cross-border injunctions outside the territory of the Benelux. Courts have applied such cross-border injunctions mainly in relation to other EU countries on the grounds that trade mark law is largely approximated by EU legislation.
Under the Community Trade Mark Regulation, the competent Community Trade Mark court is authorised to issue injunctions based on the infringement of a CTM for the whole of the Community.

5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?

Although Dutch courts are known to have ceded jurisdiction to Belgian courts on Benelux trade marks when the proceedings had already been initiated in Belgium, torpedo actions have not played a role of any importance in Dutch trade mark litigation.

5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes? How widespread are ADR methods and in which sectors? If arbitration is available to assess invalidity, will your Trade Mark Office recognise and execute an arbitral award declaring a trade mark invalid?

Parties can seek alternative resolutions for a trade mark conflict, such as arbitration or mediation and this happens regularly, although BTIP stipulates that trade mark conflicts are exclusively dealt with by state courts.

6. Procedure in Civil courts

6.1 What is the format of trade mark infringement proceedings?

Infringement proceedings are initiated by having a bailiff serve a writ of summons on the defendant at its domicile. A Dutch court requires proof from the claimant that the writ of summons has been properly served.
In general proceedings on the merits take place along the following lines (preliminary relief is discussed below in question 8). If the court is not provided with the required proof that the writ has been properly served, it holds the case over. If the writ was served properly and the defendant does not appear, the court finds the defendant in default and renders a default judgment. The court will do so unless the claims appear to be unlawful or without merit prima facie. In a default judgment the court grants, in principle, the orders, asked for by the claimant. The court may postpone the giving of a default judgment up to four weeks, during which time the defendant can cure its failure to appear.
At the first court date the defendant will be granted a postponement of six weeks to submit its statement of defence. Thereafter, it is up to the court to grant extra postponements or to order an instruction hearing or a further exchange of written statements. Before ordering a further exchange of written statements, the court will normally order an instruction hearing, unless it thinks this not to be appropriate. The court will use the hearing to obtain information and explore the possibilities of a settlement. For that reason, the presence of authorised representatives of both parties at that hearing is normally ordered by the courts. After a single exchange of briefs, the parties may request judgment, continuation of the exchange of arguments or oral pleadings. As a rule a request for oral pleadings will be denied if an instruction hearing has already taken place.
Parties do not have a right to a second exchange of briefs. It is therefore vital that all relevant arguments are brought forward in the writ of summons or the statement of defence, and that relevant evidence is referred to and, to the extent possible, attached to these documents.

6.2 Are disputed issues decided by a judge or a jury?

Disputes are settled by one or three judges. The Netherlands does not have jury trials.

6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?

It is up to the court to weigh the evidence presented to it. Documents, affidavits, witnesses and/or experts, both private and court-appointed, are used. Parties are free to present its evidence to the court in a form it thinks best. Witness statements may be submitted as affidavits or offered to be heard in court. If a witness gives testimony, both the judge and the parties are allowed to ask the witness questions. However, cross-examination of witnesses is not possible.
The onus of proof of a statement rests on the party asserting it. The court may place the onus on the other party, if it feels this is appropriate. If, for example, a defendant in an infringement suit claims invalidity of the trade mark due to non-usus, the court may order the claimant to prove that the mark was genuinely used.

6.4 To what extent is survey evidence used (eg to support acquired distinctiveness, likelihood of confusion)? What is its relevance in proceedings (eg party allegation, evidence)? Who decides which consumers are questioned in the survey (eg the court, court expert)? What level of cost should one expect to incur to carry out a survey? Are these costs recoverable from the losing party?

It is an accepted practice to offer market surveys with respect to the repute of the trade mark or the likelihood of confusion between the trade mark and the litigious sign. As one might expect, the set-up, questions and/or outcome of a survey are often the subject of fierce debate. The value of surveys is therefore hard to determine in general.
Although courts may appoint an expert who is at liberty to carry out a survey, this is not common. The costs associated with a survey are dependant on the scope, urgency, extent of the questions and/or availability of the relevant public, and may vary from €5,000 to €75,000. The recoverability of these costs is discussed as part of the question on litigation costs below.

6.5 Is evidence obtained for criminal proceedings admissible in civil proceedings, and vice versa?

Evidence obtained in criminal proceedings is admissible in civil proceedings and vice versa. It is up to the court to weigh this evidence and to determine the value of it.
Evidence can be excluded on the basis that it is, for instance, obtained in an unlawful way, but that is not necessarily the case. It is the discretion of the court to exclude evidence from the court file. Obtaining evidence in an unlawful way is, in principle, a tortious act. However, the Supreme Court ruled in Slempkes v Nool (7 February 1992) that unlawful evidence obtained from a third party is not necessarily tortious against the other party and can thus be used in court.

6.6 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?

Pre-trial discovery as such is not permitted. As of 1 May 2007 a party may, however, ask a court to grant an order to seize and preserve evidence (eg information such as computer files, data, pictures and/or samples of infringing acts, processes or products). This, however, does not provide the petitioner the right to review the seized material, but will be decided upon by the court in subsequent proceedings.
Furthermore, a party has the right to petition access to specific records (eg documents) held by a party infringing its IP rights. The petitioner must specify the information it wishes to review as ‘fishing expeditions’ are not allowed. After the sequestration of this information, the court will decide upon the access to it in separate proceedings.
Additionally, a party may petition the court to order the preliminary hearing of expert witnesses or witnesses of fact as to enable the petitioner to determine the feasibility of starting litigation. However, not only the interest of the petitioner but also its legal position and the interests of the other party is taken into account by the court when deciding on the petition. The Supreme Court upheld in Enka v Dupont (29 March 1985) a decision to reject such a petition on the grounds that a patentee did not have a sufficiently strong legal position to request a hearing of employees of an alleged infringer.

6.7 What level of proof is required for establishing infringement or invalidity?

A party has to prove his assertions. The court has a wide discretion to weigh the evidence submitted by the parties. If a court finds that a certain assertion has been substantiated sufficiently (eg by documents, surveys, experts, etc) it may accept it as a matter of fact. Assertions not disputed are likely to be accepted by the court as a matter of fact.

6.8 How long do trade mark infringement proceedings typically last? Is it possible to expedite this process?

Trade mark infringements are typically dealt with in summary proceedings, which take only six to eight weeks. These proceedings must be followed by proceedings on the merits, which in first instance typically last 18 to 24 months as of the first court date. Proceedings on the merits may take longer due to the complexity of the matter at hand in terms of fact or of legal issues (eg raising preliminary issues, such as to the jurisdiction of the court which has to be decided first or the hearing of witnesses of fact or appointing expert witnesses).
It is up to the claimant to set the first court date. This date may be anticipated by the defendant. However, thereafter the proceedings cannot be expedited unilaterally. A party can only avoid any delays, eg by refusing postponements requested by the other party for filing its submissions.

6.9 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a claimant counter delaying tactics of defendant?

The court will prevent parties from exploiting delaying tactics. However, the proceedings can be delayed by a defendant in various ways, for instance by raising preliminary issues which have to be dealt with by the court before being able to decide upon the subject matter of the proceedings and by requesting postponement of the date on which it has to file its submissions and to ask for an oral hearing and provide the court with many dates of hindrance.
A court is likely to at least once grant a request for a postponement made unilaterally if there are pressing reasons for the postponement (unforeseen circumstances or a (so-called) emergency). Once a date is set for an oral hearing it will not lightly be rescheduled.

7. Final Remedies

7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?

Those remedies are available against a trade mark infringer which are considered appropriate to rectify an infringement. Common remedies are:

an injunction against further infringements of the trade mark;
monetary awards (see question 7.3);
delivery-up or destruction of infringing products;
the invalidation of a younger, infringing trade mark registration;
the recall of infringing products;
delivery-up of materials and tools used to produce infringing products;
a rectification (to be sent to customers of the infringer) or publication of the judgment (in a trade magazine or newspaper);
details of customers supplied with infringing products to enable verification of the sending of a rectification and/or recall letter;
an audit of the administration of the infringer by an independent accountant in relation to the infringement for calculating illegal profits; and
information regarding the source of the infringing products.

7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?

A judgment is restricted to the dispute between parties to the proceedings and which are named on the decision, which might thus include suppliers or customers. An injunction erga omnes is not possible under Dutch civil law. A prior judgment, wherein a court found infringement will offer a strong precedent in future proceedings under similar circumstances against other parties.

7.3 What monetary remedies are available against a trade mark infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?

The trade mark owner is entitled to compensation for the infringement and must elect between damages and account of profits. The Supreme Court in HBS v Danestyle (14 April 2000) ruled that these do not accumulate. To enable the trade mark owner to make an informed choice the infringer may be required to provide financial details. According to the BCJ in Dior v Delhaize (24 October 2005), the net profit is the turnover minus all costs directly related to that turnover (including taxes and costs made to sell the infringing product).
Punitive damages do not exist under Dutch law as the general principle is that the trade mark owner should be put in the same position as if the infringement had not happened. This means that compensation can be awarded for all reasonably foreseeable losses suffered as a result of the infringement, including any and all costs, such as to asses and to limit the damage, to settle out of court and reasonable and proportionate legal fees.

8. Preliminary Relief

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?

A variety of preliminary relief is available, also in pending proceedings on the merits. The plaintiff must show an urgent interest in the relief sought. The Supreme Court, in Impag v Milton Bradley (29 June 2001), ruled that the urgent interest of the plaintiff is given in IP infringement cases, even where there has been a considerable delay by the plaintiff in seeking relief since discovery of the infringement, as an infringement of IP rights is considered as an ongoing source of damage which suffices to demonstrate an urgent interest in preliminary relief.
Commonly, injunctions to cease infringement are requested in preliminary proceedings. These injunctions are usually aimed at stopping ongoing infringement or preventing impending infringement. Additional measures are available, eg disclosure of details of suppliers, customers, sales and costs. Only if a claimant has a specific necessity for and urgent interest in damages, an advance on damages can be awarded by way of preliminary relief.
In proceedings on the merits a party can request preliminary or interim relief at any stage of the proceedings. The claim for interim relief must be related to the principle claims. The claimant must have an urgent interest in the relief sought. If granted, the measures will remain in place for the duration of the proceedings.

8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?

Seizure orders regarding allegedly infringing goods and financial assets are, in principle, granted ex parte. The lifting of seizures can be obtained in summary proceedings.
As a result of the implementation of the EU Enforcement Directive, ex parte relief became available as of 1 May 2007. It is only available if postponement may lead to irreparable harm on the part of the claimant. Furthermore, the plaintiff has to show a higher degree of urgency than in preliminary proceedings on an inter partes basis.
It is not required to put a defendant on notice first before applying for ex parte relief.

8.3 Is claimant entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?

Seizures and sequestration of allegedly infringing products carried out by a bailiff are common. The possibilities to preserve evidence are improved with the implementation of the EU Enforcement Directive as of 1 May 2007. As of this date it is possible to take samples, make detailed descriptions of allegedly infringing products and of processes or equipment used for their production and documents related to them. After the seizure has been carried out the court will decide separately and on an inter partes basis whether access will be granted and the conditions of it.

8.4 Can the defendant put the validity of a trade mark at issue in preliminary injunction proceedings?

A defendant can raise the issue of validity of a trade mark by way of defence. However, the court is only likely to consider an invalidity argument if it is likely that the court deciding on the merits will find that the trade mark is invalid. This is a high standard to meet; in practice this means that a registered trade mark is assumed to be valid unless convincing evidence against its validity is submitted.

8.5 What is the format of preliminary injunction proceedings?

The claimant asks the court to set a date for an oral hearing. Counsel to claimant is obliged to ask counsel to defendant for dates of hindrance and to provide the court of these dates. If there has been no contact with counsel to defendant, the court will normally set a date on a longer term as not to prejudice the defence.
These proceedings start with the service of a writ of summons upon the defendant. The writ contains information on the identity of the claimant and the defendant, the claims, the basis for those claims, the evidence he relies upon and the date and time set by the court for hearing the case. The court also sets the date by which the writ of summons must have been served as to avoid the defendant being ambushed. The claimant is only required to show that the writ was served correctly if the defendant does not appear. The defendant does not need to be represented by a lawyer and may appear in person.
The defendant is not obliged to file a defence brief before the hearing. Exhibits must be exchanged no later than two days prior to the hearing. Preliminary proceedings are fairly informal. Due to the urgency of the matter, courts tend to be flexible on procedural issues (eg parties may bring witnesses to the hearing which may be heard by the court). During the hearing, parties are typically given 45 minutes to plead their position in a first round and 15 minutes in a second round. The court usually renders a judgment within two weeks after the hearing.
In very urgent matters, courts may shorten the above time frames. This can result in hearing and deciding a case within hours if need be.

8.6 To what extent are documents, affidavits, witnesses, survey evidence, and/or (court-appointed or private) experts used in preliminary injunction proceedings?

It is not common to hear witnesses of fact or expert witnesses in preliminary proceedings and the arguments of the parties are thus mainly based upon witness statements and documentary evidence. The normal rules of evidence do not apply in preliminary proceedings. The court is, furthermore, only required to motivate its findings in more general terms. For example, the Supreme Court in Akaha v Van Roon (12 December 1975) emphasised the liberty of the court in preliminary proceedings to disregard an offer to hear a witness without providing an explicit reason for that. As a consequence the court has a considerable latitude to weigh and select the evidence in support of its decision.

8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?

The court bases its finding on the general impression made by the evidence submitted to it in terms of probabilities. The court does not make an in depth assessment of the evidence presented to it, eg the validity of a registered trade mark is assumed as described above. Courts in proceedings on the merits are not obliged to follow any of the findings made in preliminary proceedings.

8.8 How long do preliminary injunction proceedings typically last?

The proceedings typically last approximately four weeks from the service of the writ to the issuance of the judgment. If necessary, however, preliminary relief can be obtained within days, or even hours.

8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?

As a consequence of the TRIPs agreement, proceedings on the merits have to be initiated before a specific date, which date will be set in the preliminary judgment. If the proceedings on the merits are not started, the preliminary injunction loses its effect. This applies to injunctions granted in preliminary proceedings and in ex parte relief proceedings. This deadline is set by law on 31 days, but can be set on a longer term by the court.

9. Appeal Procedure

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?

Decisions in main proceedings and in preliminary proceedings can be appealed, without any form of leave being required. In preliminary proceedings the defeated party may apply for an expedited appeal. If that application is denied, the appeal will be dealt as a regular appeal. Appeal proceedings are limited to the specific objections formulated by either party, but may also relate to the dispute as such. An appeal takes the form of a rehearing rather than a review and so it is common that new evidence is considered on appeal.
There may be a further appeal to the Supreme Court on points of law.

9.2 How long do appeal proceedings typically last?

Appeal proceedings from the district court to the court of appeals will typically take 12 to 18 months. Any further appeal to the Supreme Court is likely to take one and a half to two years.
An expedited appeal will take on average two to four months.

10. Litigation Costs

10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?

The costs associated with litigation may vary widely depending on the complexity of the matter and the stance taken by the opposing party. The costs of medium-scale trade mark cases would be expected to be within a range of €25,000 to €50,000 per instance in preliminary proceedings.
To reach the stage of a decision in first instance in proceedings on the merits in medium-scale trade mark cases the costs will likely be within a range of €60,000 to €120,000. This estimate is also applicable to appeal proceedings.

10.2 Are costs recoverable from the losing party?

Prior to the implementation of the EU Enforcement Directive, the Dutch system for the compensation of legal fees in civil proceedings applied. This system, which is still applicable to claims not related to IP rights, only awards a fixed and limited amount of legal costs.
In IP cases the losing party has nowadays to pay the winner’s costs, provided that these costs are found by the court as reasonable and proportionate, all circumstances taken into account.

11. Forthcoming legislation

11.1 What are the important developing and emerging trends in your country’s trade mark law?

The major trends currently developing are closely related to the EU Enforcement Directive. The courts are still in a process of finding common ground with respect to the method to determine the scope of ‘reasonable and proportionate legal costs’. Additionally, the new provisions with respect to seizure of evidence and ex parte injunctions open a new playing field for parties and their lawyers.

11.2 To the extent it relates to trade mark enforcement, please outline any major trade mark legislation in the pipeline.

At this moment there is no forthcoming legislation relating specifically to trade mark enforcement.

12. Useful references

12.1 Please identify any useful works of reference relating to trade mark law and trade mark litigation in your country, including useful websites.

Reference works
Benelux merkenrecht en de eerste merkenrichtlijn, R. Raas, Meppel 2000;
Het merkdepot te kwader trouw, M. Tsoutsanis, Deventer 2005;
Kort begrip van het Benelux Merkenrecht, Ch. Gielen, Deventer, 2006;
Merkenrechtspraak HvJ EG, D.J.G. Visser, Amsterdam, 2006.

Useful websites
www.boek9.nl Dutch IP case law;
www.book9.nl Dutch IP case law translated into English;
www.boip.int The Benelux Office for Intellectual Property;
oami.europa.eu Office for Harmonisation in the Internal Market;
www.courbeneluxhof.info Benelux Court of Justice;
www.curia.europa.eu European Court of Justice;
www.hcch.net Hague Conference on Private International Law.