Ever since the TM Act was adopted, ensuring protection of TMs in the Grand Duchy of Luxembourg has required filing a claim. Filing claims for violation of TM rights in Luxembourg requires submitting an application with Luxembourg-based courts.
Civil claims one can file include:
- evidence seizure – a procedure typical of IPR dispute resolution in Luxembourg (initiated by commercial courts’ chairmen for the purpose of obtaining evidence confirming existence & extent of an IPR violation).
- withdrawal order – requires having a valid IP right & confirmation or threat of infringement of IPR.
IPR settlement in the Kingdom of Belgium requires plaintiffs to make a deposit guaranteeing a recompense for whatever damage defendants are likely to suffer. No requirement like this exists in Holland. Chairmen of Luxembourg-based district courts can order plaintiffs to make a deposit; however, this rule is rarely applied.
Putting an end to TM infringements in Belgium requires filing a request for an injunction with commercial courts’ chairmen. That’s the most typical way of resolving IP disputes in the Kingdom of Belgium.
What makes it most advantageous is that decisions rendered in such a fashion won’t be deemed preliminary & can instantly prevent defendants from committing a TM violation. Court chairmen may resort to additional measures by publishing a judgment or ordering that counterfeit goods be destroyed.
No TM injunctions are available; however, a temporary cessation of a violation may be requested through injunction proceedings. Following the issuance of an injunction, a final decision must be made within a timeframe stated in the injunction or within thirty days.
Claims for Damages
A claim for damages is a typical action in resolving disputes over infringement of TM rights in Luxembourg. Claimants are required to provide evidence of damage being done. The majority of adjudicators evaluate damage incurred after a violation has been established.
Under the Criminal Code, it’s possible to initiate litigation for violation of TM rights in the Grand Duchy of Luxembourg. To do so, TM owners must file a complaint with the police or relevantly authorised agencies. Following that, the latter may:
- launch a probe;
- issue a search warrant;
- refer a case to prosecutors upon completion of investigation.
To make sure that their case is investigated, TM owners are required to file a complaint with an investigating judge.
Launching IPR Proceedings in Luxembourg: Procedure
If a TM violation is committed, TM owners can file:
- civil lawsuit;
- criminal lawsuit;
- administrative lawsuit.
Those seeking to file a civil suit for IPR infringement in Luxembourg should keep in mind that testimony in civil proceedings is rarely used. Judges can appoint experts to assess the damage or clarify certain technical aspects.
A pre-trial period may vary in length & depend on parties’ positions regarding pretrial stages. Normally, it can take weeks or even months to obtain injunctions & interim measures from chairmen of commercial courts. Getting decisions of first instance courts may take even longer (up to twenty four months).
Appeals are usually filed within thirty days after a decision has been served on an opposing party. Appeals are typically reviewed within twelve or twenty four months; however, this period can be extended if an expert opinion is required.
Costs/Statute of Limitations
Those planning to settle a TM infringement dispute in Luxembourg should keep in mind that the statute of limitations is from five to ten years. Litigation costs range from six hundred to one thousand euros, excluding solicitors’ fees.
Appeal & Defense
Decisions rendered by courts of 1st instance may be appealed. Procedure for appealing TM infringement cases is the same as the standard court procedure in the Court of Appeal.
In the course of resolving a trademark rights dispute in Luxembourg, infringers usually challenge a TM’s validity.
Typically, remedies can be:
- injunctions against violators;
- compensation for losses;
- paying profits obtained from selling counterfeit products;
- seizure of counterfeit products & equipment used for their manufacture;
- prohibiting sale or destroying products violating a TM, including materials or equipment used for their manufacture;
- publication of courts’ verdicts at the expense of violators;
- prohibition to disseminate any info pertaining to counterfeit services/products.
Resolving a TM infringement dispute through ADR in the Grand Duchy of Luxembourg is a possibility. Considered a less costly way of settling disputes, ADR can only be resorted to in a limited number of situations (e.g. disputes involving a TM or domain name).
If you’re planning to obtain IPR protection in Luxembourg or interested in getting a permit authorizing the use of a TM in the Benelux countries, do not hesitate to contact IQ Decision UK. Our team of experts will always be happy to provide you with professional support & assistance in that regard.