I FORMS OF INTELLECTUAL PROPERTY PROTECTION

i Overview

In terms of intellectual property law and litigation, the Netherlands ranks among the most important jurisdictions in Europe. IP cases in the Netherlands are handled by several courts that can boast extensive experience in that respect. The Hague Court, in particular, has exclusive jurisdiction in patent cases and other specific types of IP litigation, employing specialist judges to assess such cases. Rulings handed down in the Netherlands consequently carry significant weight in the rest of Europe as well.

In terms of entering the European market, the Netherlands is an essential starting point. Enforcing IP rights in the Netherlands, therefore, can prove instrumental in the protection against infringement in Europe. IP litigation in the Netherlands is efficient in terms of both time and costs; hence it is a favoured venue for IP litigation. IP proceedings in the Netherlands primarily concern patents, trademarks, designs and copyright. These will be discussed in greater detail, below.

ii Patents

There are several ways to obtain patent protection in the Netherlands, of which filing a patent application with the Dutch Patent Office is the first. Second, the protection of patents in the Netherlands can ensue from a European application before the European Patent Office (EPO). In addition, the Netherlands is a member of the Patent Cooperation Treaty (PCT). Whether it be via a national application or an international treaty (e.g., European Patent Convention (EPC), PCT), a patent that is issued for the region of the Netherlands will be governed by the Dutch Patents Act (DPA).

National Dutch patent application

National Dutch patents are granted through a patent application procedure before the Dutch Patent Office. Several requirements must be met before patent protection is granted: the invention must be novel, must involve an inventive step and must be capable of industrial application.

The term 'unexamined' is often used when referring to Dutch national patents. Even though patent application procedures always involve a search into the prior art (national or international, depending on the choice of the applicant), the actual grant of the Dutch national patent will not be affected by the results of such a search. Hence, the results of the search into documents that destroy novelty or are prejudicial to inventive step never prevent applications for Dutch national patents from being granted. The underlying idea is that this would allow smaller companies to obtain patent protection as it limits prosecution costs. Subsequent enforcement proceedings will then address the issue of the patent's validity.

European patents

A European patent will be valid in the Netherlands once the corresponding patent application that designates the Netherlands is granted. The rules of the DPA will govern the Dutch part of that European patent. The DPA distinguishes, in some respects, between Dutch patents granted via a European application and those granted following a Dutch national application. The distinction in their respective treatments relates primarily to the unexamined nature of Dutch national patents. However, the remedies are the same for both types of patents.

Most of the patents valid in the Netherlands are issued following application procedures with either the EPC or the PCT.

iii Trademarks

In the Netherlands, there are two legal regimes that govern trademark protection.

Benelux trademarks

First, there is the Benelux Convention on Intellectual Property (BCIP) of 1 September 2006, that has been amended on 1 March 2019 to implement the Trademark Directive (EU 2015/2436). In the Benelux territory, covering the Netherlands, Belgium and Luxembourg, this treaty governs the grant, scope of protection and validity of trademarks (and design rights). From the date on which the application was filed, trademarks under the BCIP have an initial 10-year term of protection. This initial term can be extended with successive 10-year terms. It is worth noting that a trademark under the BCIP is a unitary trademark for the Netherlands, Belgium and Luxembourg. Such trademarks can be transferred only as a whole, so for the entire Benelux, even though they can be licensed for only one of those three territories. There is no national trademark system in the Netherlands.

Even though the position occupied by Benelux trademarks is separate from that of European Union trademarks (see below), Dutch courts interpret the BCIP in conformity with the Trademark Directive (EU 2015/2436). Dutch courts take the case law of the Court of Justice of the EU (CJEU) into account in their interpretation of the BCIP provisions.

The most important legislative changes, owing to the implementation of the Trademark Directive and the two protocols amending the BCIP, are the following. Owners of trademarks now have the possibility to file opposition against similar trademarks filed for goods or services that are not similar, based on a trademark that enjoys a reputation in the Benelux, when use without due cause of the later mark would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier trademark. In addition, the BOIP has introduced a new procedure at the BOIP that makes it possible to apply (at any given time) for the invalidity or the revocation of a Benelux trademark in an office action before the BOIP. Invalidity may be claimed on absolute grounds (in particular owing to a lack of distinctive character) and on relative grounds owing to similarity with an earlier trademark. Revocation of a Benelux trademark can be claimed in cases of non-use. Furthermore, the Second Chamber of the Benelux Court of Justice will now be exclusively competent to handle all appeals against decisions of the BOIP in opposition proceedings and in cases regarding the refusal of a Benelux trademark. Before the legislative changes, those appeals were handled by three different courts in the three Benelux countries. Now the handling of the appeal proceedings is centralised. Moreover, the requirement that the trademark must include a graphic representation is no longer required by law and the absolute grounds for refusal for shape marks are broadened, and are not limited anymore to the shape of a mark, but now also include 'other characteristics' of the mark (e.g., colour or smell).

European Union trademarks

European Union trademarks (EUTMs) are valid in the Netherlands provided they have been registered on the basis of EU Regulation 2015/2424 (the Trademark Regulation). The protection conferred by European Union trademarks applies to all EU Member States. The prosecution of European Union trademarks is the responsibility of the European Union Intellectual Property Office (EUIPO). The system of European Union trademark protection is independent of that of the Benelux trademarks, enabling applications to have their brands protected in the Netherlands by both Benelux and European Union trademarks.

Dutch courts interpret European Union trademarks, and the protection that they confer, in accordance with the case law of the Court of Justice of the EU. The protection of a European Union trademark in the Netherlands should, thus, correspond with that of the same trademark protected under the BCIP, although the BCIP, contrary to the Trademark Directive, also provides the trademark owner the right to oppose the use of a sign other than for the purposes of distinguishing goods or services, where that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

iv Designs

In reference to the trademarks above, the structure of protection of designs is more or less the same.

Benelux design rights

The protection of design rights for the Netherlands, Belgium and Luxembourg is also covered by the BCIP. Considering no national design right system exists in the Netherlands, design right protection under the BCIP is as close as one can get to obtaining Dutch national design right protection. The initial term of protection is five years. This term may be extended to a maximum of 25 years, by five years at a time. The protection of design rights for EU Members States, similarly to that of trademarks, is subject to the standards set in a European directive, which in this case is the Design Right Directive (Directive EU 98/71). In their interpretation of the BCIP, Dutch courts will be attentive to the Design Right Directive and the CJEU case law on this Directive.

Community design rights

Design right protection in the Netherlands can also be obtained through a Community design right. EU Regulation 6/2002 governs this Community design right. Designs may be granted for the appearance of either three-dimensional designs, or drawings under both systems. The requirements for such a design are (1) novelty and (2) individual character. The BCIP dictates that the aspects of the design that are necessary for obtaining a technical effect are not covered by the protection of designs. All the technical aspects of a design must be patent protected (see above), and the Dutch system does not acknowledge design rights with a limited technical functionality, such as utility design rights.

v Copyright

The protection of copyright in the Netherlands is governed by the Copyright Act. Pursuant to the Copyright Act, copyright protection is provided to works of literature, science or art. The definitions of such works is further specified in the Act to include books, plays, industrial design, pantomimes, movies, photographs and also computer software. Only original works with their own individual character that bear the personal mark of the author can qualify for copyright protection, as established in Supreme Court case law. It is noteworthy that the threshold for copyright protection in the Netherlands is relatively low. For the test of copyright protection, neither the absolute novelty of the relevant work nor the amount of effort dedicated to its creation are contributing factors. Copyright protection has been granted to characters (from books, comics or movies) in some cases. In such a case, the character must also consist of at least an original combination of character elements to be protected by Dutch copyright.

Copyright protection in the Netherlands does not extend to ideas, plans, trends, style or any other types of works that have not been stated in or translated into a concrete form, as established in Dutch case law.

vi Trade secrets

In the Netherlands, the general rule of tort protects trade secrets or know-how. Even though the Netherlands is a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which contains a dedicated clause on trade secret protection, before 2018 there was no separate Dutch law that protected proprietary confidential business information. On 23 October 2018, the Dutch Trade Secrets Act entered into force, implementing the EU Directive 2016/943 on the protection of trade secrets that came into force on 5 July 2016. Before the Dutch Trade Secrets Act, the Dutch legislator always considered that the general rule of tort offered ample protection for trade secrets and know-how. In the Netherlands, there is thus an extensive body of case law on the subject and the protection of proprietary information is generally considered adequate. Furthermore, Dutch tort law protected the owner of proprietary information against acts by third parties unlawfully handling such information (e.g., stealing the information or obtaining the information through fraud) and against acts that violated confidentiality agreements. The filing for seizure of evidence in trade secret cases was already possible based on case law of the Supreme Court of 2013.

The Dutch Trade Secrets Act that has entered into force introduced a separate Dutch law on the protection of trade secrets. Trade secrets ought to enjoy a wider scope of protection in the Netherlands, because the Netherlands made use of the option of the EU to provide a broader protection than provided by the EU Trade Secrets Directive. The Trade Secrets Act defines 'infringing goods', as goods of which the design, characteristics, functioning, production process or marketing significantly benefits from trade secrets that are unlawfully acquired, used or disclosed. The legislator prescribes a broad interpretation of the term 'significantly benefits'. If trade secrets are only partly used for the production of a good, the whole good will therefore be defined as infringing. In addition, in line with the Trade Secrets Directive, the Trade Secrets Act enables the possibility (which is not limited to cases that are specifically about trade secrets) that the access to a trade secret is reserved to lawyers or representatives that have received special permission hereto from the court. The Trades Secret Act also includes the possibility to recover legal costs, which will be granted by the court to the winning party in respect of all 'reasonable and equitable' legal and other costs.

vii Other

For the types of protection stated above, the Dutch legislature has put in place specific regimes for the protection of databases, the design of chip typographies and plant breeder rights. The Dutch Databases Legal Protection Act is a promulgation of the EU Directive 96/9 on the legal protection of databases, and provides for the protection of collections of works, data or other elements that have been systematically or methodically arranged following a substantial investment. The entity that has carried the risk for the substantial investment in question is granted a sui generis database right on the basis of the Databases Legal Protection Act.

The European regulation on the protection of typographies of chips has been implemented in the Netherlands. This has led to the adoption of a law granting protection for a typography that is original in the sense that it is the result of the maker's intellectual efforts and is not generally known within the chip industry. This law bestows upon the maker of a typography an exclusive right to reproduce and make such typographies. The law does require this typography to be registered with the Dutch patent office.

ii RECENT DEVELOPMENTS

i Copyright

On 23 May 2017, the Arnhem-Leeuwarden Court of Appeal referred questions for a preliminary ruling to the CJEU relating to the extent to which a specific taste may qualify for protection under copyright law. The main question is if Union law precludes the taste of food – as the author's own intellectual creation – from being protected by copyright.2 The dispute is between two cheese manufacturers. The claimant, Levola, and the defendant, Smilde Foods, are both producers of a cheese product – the former called ''Heks'nkaas' (witches' cheese) and the latter 'Witte Wievenkaas'. Heksenkaas is a spreadable dip made of cream cheese, fresh herbs and 'a tiny bit of magic'. According to Levola, the cheese spread called 'Witte Wievenkaas' infringes Levola's copyright on the taste of Heks'nkaas.3 On 13 November 2018 the Grand Chamber of the CJEU ruled that the taste of food products is not eligible for copyright protection.4 The CJEU considered that in order to obtain copyright protection, one must be able to identify, clearly and precisely, the subject matter protected and it is necessary that there is no element of subjectivity in the process of identifying the protected subject matter, which is – according to the CJEU – not possible with the taste of food. The CJEU concluded that in the current state of scientific development it is not (yet) possible by technical means to precisely and objectively identify the taste of food products and therefore the protection under copyright law of a specific taste was rejected by the CJEU.

On 13 December 2017, the District Court of The Hague5 ruled that the Swiss company Vitra, manufacturer of the 'dining sidechair wood (DSW)' chair designed by Ray and Charles Eames cannot prohibit Kwantum from selling a similar chair.6 The Court noted that the chair was first exhibited in the United States and is not protected by copyright law there. Therefore, applying the Paris Convention for the Protection of Industrial Property, the Berne Convention and the EU Directive on the term of protection of copyright, the Court decided that the chair is not protected by copyright in the Netherlands. The Court also ruled that Vitra's chair did not have its own place in the market when Kwantum launched its product. Therefore, Kwantum did not act unlawfully under the Dutch doctrine of slavish imitation.

The Court of Appeal of Amsterdam7 also denied copyright protection to a two-coloured chocolate curl in a case between Dobla and Chocolate King, because the combination of two contrasting colours forming stripes and the shape of the chocolate curl is according to the court too simple and trivial to meet the threshold of copyright protection. The Court is of the opinion that a bell-shaped chocolate curl, variating in colour, and a tapered sliced piece of chocolate can be protected by copyright, but that the scope of protection is so limited that the products of Chocolate King are not infringing the copyright of Dobla.

The Court of Appeal of Amsterdam also ruled on 29 January 20198 that the Charly and Chaplin chairs from Montis no longer enjoy copyright protection. The Court of Appeal denied the applicability of the EU Directive on the term of protection of copyright and ruled that the Charly and Chapin chairs are no longer copyright protected because Montis failed to file the maintenance declaration in time (which was obligatory because of the Benelux Design law at that time). The court ruled that the maintenance declaration was not a violation of the Berne Convention and TRIPS, referring to the decision of the Benelux Court of 11 July 2018,9 the judgment of the CJEU of 20 October 201610 and different judgments of the Dutch Supreme Court on copyright in the Montis v. Goossens case.

In addition, the Copyright Contract Law Disputes Committee began operating on 1 October 2016. The setting up of this committee is the direct result of the implementation of Article 25(g) DCA, which provides for the creation of a dispute resolution committee competent to rule on matters of (1) fair remuneration; (2) additional fair remuneration (bestseller clause); (3) non-use of a work; and (4) unfair contract terms. The only fees involved are a complaint fee of €150, and, for the exploiter, registration fees of €150. Legal representation is not required. On 27 July 2018 the committee rendered a decision11 on the applicability of Article 25(g) DCA, and more specifically the article that enables the author to ask for an additional fair remuneration, also known as the 'bestseller clause'. The decision is initiated by the screenwriter and the director of a Dutch movie titled 'Soof 2'. The committee ruled that total return of exploitation of the movie by the producers is highly disproportionate to the agreed royalty payment of the screenwriter and the director. Therefore the committee ruled in favour of the director and screenwriter and concludes that the producers must increase the royalty payment from 5 per cent to 10 per cent respectively from 7 per cent to 12 per cent.

ii Patents

As from 1 February 2019, the DPA contains a new exemption to the exclusive right of the patentee. The new exemption of Article 53(3) DPA allows pharmacists to prepare drugs that are still patent-protected. The exemption states that the exclusive right shall not extend to the preparation of drugs for direct use for the purpose of individual cases on medical prescription of drugs in pharmacies. The exclusive right shall also not extend to any acts regarding the preparation of drugs in this regard.

In 2018, several judgments were delivered by the District Court of The Hague in the extensive patent dispute between Nikon and ASML, which comprises 11 separate infringement actions based on 11 different patents in the Netherlands. The patentee, Nikon, owns different patents on the semiconductor lithography technology. Lithography systems are used by ASML to fabricate chips. In the judgments of 18 July 2018,12 6 June 2018,13 22 August 2018,14 the District Court of The Hague ruled that three invoked patents of Nikon are (partly) invalid, because of a lack of an inventive step and they can therefore not be infringed by ASML. In the judgment of 1 August 2018,15 the court ruled that that ASML was not infringing the patent, because Nikon had not proved that ASML was using an exposure apparatus with a reference (MFM) that was covered with light-transmissive material. The court therefore did not get to the assessment of the validity and prior-use of this specific patent. Carl Zeiss SMT GmbH also asked the court in several procedural issues to order a joinder of related cases with the cases that Nikon had started against ASML, which the court rejected.16

On 3 November 2017, the Dutch Supreme Court handed down a landmark decision on the direct and indirect infringement of second medical use patents in the MSD v. Teva case. This case relates to MSD's Swiss-type second medical use patent protecting a combination therapy of Ribavirin and Interferon Alpha for a specific group of hepatitis C patients (EP 861).

Teva had introduced on the Dutch market a generic Ribavirin product. The product included a skinny label, in which the indication of EP 861 (the specific group of hepatitis C patients) had been carved out. The parties did not disagree that there was a substantial market for both a Ribavirin therapy according to EP 861 and for a Ribavirin therapy that was not protected by EP 861 (or by any other patent).

The Supreme Court held that a manufacturer or seller directly infringes a patent with a Swiss-type claim if he or she foresees or ought to foresee that the generic substance he or she manufacturers or offers will intentionally be used for treatment covered by the second medical indication patent. This requires that the average person skilled in the art, on the basis of the SmPC or the product information leaflet or some other circumstance, will consider that the substance is (also) intended for or suited to that patented treatment. The manufacturer or seller will then have to take all effective measures that can reasonably be required of him or her to prevent his or her product from being dispensed for the patented second medical indication. The mere circumstance of a carve-out in the SmPC and product information leaflet of the generic drug – as in the present case – is generally not sufficient to rule out direct infringement.

The Supreme Court also held that the reasonable protection of the patent proprietor prescribed by Article 1 of the Protocol justifies that there can be an indirect infringement of a Swiss-type claim (in the same way as an EPC 2000 claim). The Supreme Court held that the patented use protected by Swiss-type claims is 'an essential element of the invention', which is a requirement for establishing indirect infringement. It is not an objection that a manufacturer of a generic medicine can both directly and indirectly infringe such a patent

With regard to second medical use patents, the District Court of The Hague invalidated on 11 April 2018 on the grounds of the lack of an inventive step AstraZeneca's patent covering the use of fulvestrant in the preparation of a pharmaceutical formulation for the treatment of breast cancer.17 The Court of Appeal reversed this decision and ruled on 27 November 2018 that the patent is valid and Sandoz had infringed it.18 In its judgment of 8 May 2018, the Court of Appeal of The Hague held in preliminary proceedings that Fresenius Kabi had infringed Eli Lilly's patent covering the use of pemetrexed disodium in combination with vitamin B12 for the treatment of cancer.19

On 8 February 2017, the Dutch district court in The Hague ruled in the Archos v. Philips case for the first time in the Netherlands since the Huawei decision on standard-essential patents (SEPs) and fair, reasonable and non-discriminatory (FRAND) issues. In this case the court was specifically asked by Archos to give a ruling on the 'FRANDness' of the licence proposals of both parties. The Court ruled that Archos, as the claimant, carried the burden of proof. Archos had not argued that the burden should shift to Philips because of the special position of Philips as a SEP holder, which possessed the information to determine how FRAND its offer really was. In fact, Archos apparently claimed it could prove Philips' offer was not FRAND on the basis of public information.

The Court further indicated that FRAND is a range. Both the offer of the SEP holder and the counter-offer of the SEP user must be FRAND, but that does not mean they must be exactly the same.

The Court also noted that a large part of the negotiation history took place before the Huawei judgment. Before Huawei, the jurisprudence (Philips v. SK Kasseten in Holland and Orange Book in Germany) required the SEP user to take the initiative of making a FRAND licence offer, rather than the SEP holder. According to the Court this meant the Huawei judgment justified a 'moment for new negotiations' between Philips and Archos. Philips took the initiative 'in accordance with said judgment' by making an offer in July 2015 and Archos appears (from the judgment) to have ended the possibility of negotiating a FRAND licence by making a low counter-offer. Although the Court decision does not say so explicitly, it appears the Court considered Archos was not a willing licensee (an obligation of a SEP user under Huawei).

The Court decision thoroughly analyses Archos' submission regarding the Philips FRAND offer and Philips' rebuttal. However, in the Court's finding against Archos it is noted that it could have raised points during the course of the negotiations.

Philips also initiated three parallel infringement proceedings against Asus, thereby relying on the same three patents as in Archos v. Philips. The District Court of The Hague declared20 the three patents invalid due to lack of novelty and inventive step.21

iii Trademarks

Louboutin, whose characteristic red sole for women's high-heeled shoes is protected as a trademark, enforced its trademark against local Dutch shoe trader Van Haren.22 The legal proceedings in the Netherlands were initiated by Louboutin in 2013,23 claiming that Van Haren infringed the Benelux trademark rights of Louboutin by selling ladies' shoes with high heels having red soles. On 9 March 2016, the District Court of The Hague asked the CJEU if the definition of 'shape' within Article 3(1)(e)(iii) of Directive 2008/95 is limited to the three-dimensional elements of a product or can also include two-dimensional ones like, for instance, a colour. The Advocate General answered this question in the affirmative in his opinion of 22 June 2017. On 13 September 2017, the Chamber of the CJEU handling this case referred the case to the Grand Chamber (15 judges) of the CJEU because of the potential impact of this case on the overall functioning of the European Union trademark system. After a second round of pleadings, the CJEU also asked the Advocate General to deliver a new opinion. In his opinion of 6 February 2018, the Advocate General confirmed his earlier opinion that Article 3(1)(e)(iii) of Directive 2008/95 is to be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour.

The CJEU ruled on 12 June 201824 to the contrary and decided that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the proceedings, does not consist exclusively of a 'shape' in the context of Article 3(1)(e)(iii) of Directive 2008/95. To follow on from the judgment of the CJEU, the District Court of The Hague ruled on 6 February 2019,25 in line with the reasoning of the CJEU, that Louboutin's Benelux trademark does not solely consist of a shape because it is not intended to protect the shape of a product but only the application of colour on a specific place on a product. Therefore the court granted an injunction under pain of a penalty and also ordered van Haren to provide a report of sales figures, destroy the remaining stock and pay compensation for procedural costs.

The Court of Appeal of The Hague rendered a decision in 2017 on the decisive role of conceptual similarity in trademark proceedings. The decision involves the issue between the Dutch company Levola that is known for its cream cheese sold as 'Heksenkaas,'26 the same one as discussed under the recent developments on copyright and the company Fanofinefood, which filed different marks for its product 'Witte Wievenkaas'.27 The Court of Appeal of The Hague ruled that – merely because of the conceptual similarities – the pending oppositions against the 'WITTE WIEVENKAAS' trademarks must succeed. Witte Wieven28 are often portrayed in Dutch mythology and legends as white ghosts, and also female and malicious individuals, that frighten people and live alone. The court ruled that, if broken down by type, Witte Wieven would be characterised by a significant part of the public as a witch and both figures have negative connotations. According to the Court of Appeal a significant part of the public will therefore consider both cheeses as cheeses originating from or designated for fictitious females with negative connotations. Therefore, given the conceptual similarities, the court considered the latter marks conceptually similar enough to cause confusion. This case came before the Supreme Court. The Advocate General considered in his opinion of 26 January 201829 that the judgment of the Court of Appeal of The Hague, that a substantial part of the public knows the meaning of the notion witte wieven, was unfounded. He recommended the annulment of the decision and the case's referral for further judgment. The Supreme Court set the judgment of the Court of Appeal aside in its judgment on 13 July 2018.30 The Supreme Court was also of the opinion that a substantial part of the public did not know the meaning of witte wieven. According to the Supreme Court, the Court of Appeal had not substantiated on what grounds a significant part of the public would characterise Witte Wieven as female and fictitious individuals with negative connotations. The Supreme Court therefore annulled the decision and referred the case back to the Court of Appeal for further judgment.

On 5 February 2019, the Court of Appeal of Amsterdam31 ruled in a protracted dispute between Hauck and Stokke on the validity of the shape mark on the well-known design of the Tripp Trapp children's chair. The Court of Appeal judged in line with the answers given by the CJEU in this case and ruled that the shape mark of Stokke is null and void, because of the ground for refusal of registration set out in Article 3(1)(e), 1st indent. This ground applies to a sign that consists exclusively of the shape of a product with one or more essential characteristics that are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors and therefore the shape mark of Stokke is invalid.

On 18 December 2018, the District Court of The Hague32 rendered a decision in an interesting case on the scope of protection of the famous Lacoste mark. Lacoste owns the figurative mark including the famous Lacoste crocodile. Hema is the defendant, which is a well-known Dutch company that sells in its 350 stores in the Netherlands and other EU countries a variety of consumer goods. Hema offers for sale children's underwear that bear several images of different crocodiles and reptiles and a blue undershirt containing one crocodile. The District court concluded that Hema was not infringing the trademark of Lacoste by selling the underwear, because the reptiles were used in a decorative way and not as a trademark since the crocodiles were displayed all over the underpants and undershirt of the underwear set. The court was of the opinion that it was very common to use animals on children's underwear. Regarding the blue undershirt, the court concluded that the reptile was not merely used in a decorative way, because only one crocodile was printed on the shirt of a relatively small size. The Court therefore thought that there was a likelihood of confusion, but because the blue undershirt was only sold with the grey underwear set as a set, the court held that the public was not likely to be confused as it was not likely that they would think that the shirts were made by Lacoste. Accordingly, the District Court rejected the claims of Lacoste.

iv Trade secrets

As mentioned above, since 23 October 2018 the Dutch Trade Secrets Act came into force. On 28 September 2018,33 the Supreme Court already anticipated in a decision on the Dutch Trade Secrets Act. The case pending concerned Dow, which requested access to material seized at Organik on the basis of the alleged theft of Dow's trade secrets by Organik.

The Court of Appeal granted Dow (part) access to the seized materials. According to the Supreme Court, this was correct and there was no need to specify the trade secrets in more detail. The Supreme Court ruled that there was no violation of Article 6 of the European Convention of Human Rights, more specifically the right to hear the arguments of both parties, nor to the right to a fair trial, when the Court of Appeal and Organik were not aware of the specific substance of the trade secrets that were allegedly stolen. There was no need for Dow to specify the allegedly stolen trade secrets in more detail according to the Supreme Court.

v Designs

On 20 February 2018, the Court of Appeal of The Hague34 rejected the infringement of design right of a table gas heater. Happy Cocooning obtained a Community design right on the minimalist and squared design of a table gas heater with a round cut-away in the middle. According to the Court of Appeal, the squared design of Arpe did not infringe the community design right of Happy Cocooning, because the gas heater of Arpe was not a minimalistic designed product with lining, but had a more messy wood look. In combination with other more minor differences, the Court of Appeal concluded that no Community design right infringement occurs.

III OBTAINING PROTECTION

i Patents

The Dutch Patents Act provides that patent protection can be obtained for inventions that meet three conditions: they must be new, involve an inventive step and be capable of industrial application. In addition, the invention has to be sufficiently disclosed in the patent and needs to be described clearly therein. These requirements reflect those stated in the EPC. As is the case in the EPC, certain subjects are not considered to be inventions under the DPA. These subjects include scientific theories and mathematical methods, aesthetical shapes, computer programs and business methods. The DPA also describes inventions that cannot be patented, such as the human body in its various stages of development, and the discovery of parts of it that include sequences or partial sequences of the genome, plants and animal breeds, methods that are predominantly biological in nature and methods for the treatment of the human or animal body. To be more specific, the DPA provides that certain methods would be contrary to public policy and therefore cannot be patented. Such methods include human cloning, methods whereby the genetic identity of humans can be changed, using human embryos, methods changing the genetic identity of animals that would cause suffering without any medical use and methods that could damage the health of humans, animals or plants or lead to significant damage to the environment.

In the Netherlands, patent protection can be obtained by filing a patent application with the Dutch Patent Office. Once 18 months have passed from the date on which the application was filed, the application will be recorded in the patent register at the earliest opportunity. The patent application is made public at that time. The patentee will then have to apply for a novelty search within a period of 13 months of the filing or the priority date. While the search may bring to light documents that could destroy the novelty of the invention or be prejudicial to its inventive step, the results of the search have no impact on the actual grant of the patent. The patent will be registered at least two months after the publication of the search and be thereby granted, affording it a protection period of 20 years. After learning the results of the novelty search, the patentee can amend the patent application if need be.

While Dutch national patents are not examined per se, the validity of the patent will become the issue at the heart of any enforcement action initiated by the patentee.

It bears noting that most of the patents enforced in the Netherlands are actually Dutch parts of European patents that have been issued by the EPO after a successful patent application.

The wording of the patent claims determines the scope of protection of a Dutch patent, which must be interpreted in light of the descriptions and the drawings accompanying the patent. In Dutch case law, reference is often made to Article 69 EPC and the protocol belonging thereto. In some cases, the prosecution file may carry relevance for the scope of protection of patents in the Netherlands.

ii Trademarks

In the Benelux, trademarks can be obtained by filing an application with the Benelux Office of Intellectual Property (BOIP). Following the publication of the application, the BOIP will assess whether the trademark satisfies certain requirements, such as whether a distinctive character is lacking, whether it contains signs that actually indicate certain aspects of the goods or services or signs that have become descriptive. Whenever the BOIP plans to refuse a trademark application, it will substantiate its intentions with reasons. Afterwards, the applicant will be given the opportunity to counter the BOIP's decision by advancing arguments supporting its case. In the event that the BOIP finally refuses the trademark, this decision can be appealed against before the Second Chamber of the Benelux Court of Justice.

After the trademark has been registered, third parties will have a period of two months, starting on the first day of the month after publication, to lodge an opposition to the trademark. Trademarks will be valid for an initial period of 10 years once they have been registered. This initial validity period can be renewed for additional 10-year periods, which is not subject to any cap.

Because trademarks are liable to be revoked if they are not put to normal use, a trademark should, in practice, be used within five years of registration.

A Benelux trademark bestows upon its owner an exclusive right that can be invoked against signs that are either identical or similar and that are used for goods or services that are either identical or similar. Trademarks of a certain reputation are granted a broader scope of protection on account of said reputation.

iii Designs

The BOIP is also charged with the processing of applications for Benelux designs. Design right applications are registered first and then published, and must contain a picture, drawing or some other graphic representation of the design that is registered.

Whether the formal registration requirements are met by design is not for the BOIP to examine. The registration requirements aforementioned are novelty and individual character. The former requirement, that of novelty, is met if no identical design has been made public prior to the application date. The latter requirement, that of individual character, is met if, to the informed user, the general impression of the design is different from the general impression resulting from designs that have been made available to the public prior to the date of application.

The Benelux design right confers upon the design right owner the right to object to any use of a product that in which the same design as the registered design has been incorporated or any use that does not give a different overall impression. Objection can be lodged against the production, offering, trade, sale, rent and importation of the product in question.

iv Copyrights

Copyright protection under the Dutch Copyright Act (DCA) is conferred on a work by the actual creation thereof, such to the extent that the work has an original character and bears the personal mark of the maker. As the Netherlands is a party to the Berne Convention, the registration of copyright is not subject to any requirements. There is no copyright register in the Netherlands.

A copyright under the DCA provides the copyright holder with an exclusive right to copy or make available to the public the copyright-protected work or adaptations thereof that cannot be considered a new work.

v Trade secrets

The Netherlands now has a separate law for the protection of proprietary confidential business information, as has been mentioned in the foregoing. The Trade Secrets Act defines a 'trade secret' as information that is kept secret, which means that it is not generally known or readily accessible to persons within the circle that normally deals with the kind of information being considered. The second requirement is that the information must be commercially valuable because it is (kept) secret. The third requirement is that the person in control of the information must take reasonable steps to keep it secret. The best way of protecting information is thus by maintaining and safeguarding its confidentiality, by imposing confidentiality obligations on all parties that gain access to the confidential information.

IV ENFORCEMENT OF RIGHTS

In the Netherlands, valid intellectual property rights can be enforced through the regular system of civil proceedings. The EU Enforcement Directive (No. 2004/48) has been implemented in the Dutch Code for Civil Procedure (DCCP), which includes such measures as ex parte injunctions, seizure of evidence and full cost orders for losing parties.

Typically, the Dutch enforcement of IP rights starts with a letter to the alleged infringer, stating the details of the infringement, the IP rights that are invoked and the steps that the infringer is requested to take. If no settlement is reached, the IP holder will typically start preliminary injunction proceedings or proceedings on the merits.

In practice, most IP cases are brought before the courts in The Hague and Amsterdam. Consequently, these courts can boast most experience in this regard. For more information on exclusive jurisdiction, see below.

i Possible venues for enforcement

The legal enforcement of IP rights generally needs to be initiated before one of the district courts in the Netherlands. These district courts are equipped to rule on the merits of cases regarding IP infringement or the validity of the IP rights in question. Cases involving an urgent interest can be heard in preliminary injunction proceedings before these district courts.

ii Requirements for jurisdiction and venue

If the defendant has its place of business in the Netherlands, or if the actual IP infringement takes place on Dutch territory, Dutch courts can assume international jurisdiction to take cognisance of disputes. Once international jurisdiction has been established, to the extent necessary, the jurisdiction of the relevant district court is determined in much the same way. The court of the district in which the defendant has its office, or in which the infringement actually takes place, will have local jurisdiction. These rules allow the possibility of multiple district courts having jurisdiction within the Netherlands.

On the basis of several Dutch IP laws, exclusive jurisdiction to hear certain cases, such as those relating to patent infringement and the validity of patents, lies with the District Court in The Hague. The exclusive jurisdiction of the court in The Hague furthermore extends to cases regarding European Union trademarks and Community designs.

iii Obtaining relevant evidence of infringement and discovery

Dutch procedural law does not provide for a general concept of discovery or disclosure of documents. In principle, the parties are free to collect the evidence that they require in the proceedings, and the Dutch courts are free to weigh that evidence as they deem appropriate.

The implementation of EU Directive 2004/48 on the enforcement of intellectual property rights has led to the implementation of certain possibilities to seize and safeguard information into the DCCP. These rules allow the right holder to request the district court in preliminary relief proceedings to grant permission to seize evidence that is in the possession or under the control of the infringer. The preliminary relief judge will assess such requests for permission, mostly on an ex parte basis. The requests must explain and elaborate on why a legitimate fear of infringement exists. After permission for a seizure has been granted, the right holder may direct a bailiff to inspect the premises of the infringer. Accordingly, the bailiff will do so with the help of the necessary experts, such as IT specialists or technical experts. Any information collected by the bailiff will not, however, be handed over to the right holder directly. The information will initially be held by a custodian who has been appointed for this purpose when the leave for seizure was granted. The right holder will then have to institute separate proceedings, requesting the court for disclosure of the relevant documents that were seized. The right holder will not be able to access the seized documents until the court grants the request for such disclosure.

iv Trial decision-maker

The court of The Hague, especially, employs specialist judges to adjudicate IP cases, all of whom are seasoned experts. Because jurisdiction in patent cases lies exclusively with The Hague court, some of the specialist patent judges on this court's payroll can boast technical acumen as well. IP proceedings on the merits are typically heard by a three-judge division. Preliminary relief proceedings, in which right holders have an urgent interest in relief, are adjudicated by a single judge, who is referred to as the preliminary relief judge.

Although the procedural rules that apply in the Netherlands allow courts to appoint independent experts who specialise in a particular technical field or to request the parties to produce additional evidence to support the facts they are relying on, parties rarely ask for such an appointment. Instead in patent cases, the parties to the proceedings are usually assisted by technical experts of their own choosing, who will file written expert statements on behalf of the party that engaged them. These experts often show up at the hearing as well.

The examination and cross-examination of party witnesses, be they experts or not, has no place in the proceedings, as litigation advances primarily through the exchange of written briefs (see further below).

v Structure of the trial

Dutch proceedings on the merits are conducted mainly by the exchange of written briefs in which the parties set out their arguments and defences. This exchange is often followed by a court hearing during which the parties will have the opportunity to present further arguments. Proceedings are initiated with a writ of summons, in which the claimant describes the IP right that it invokes, the infringement against which the action is brought and the relief that is requested. In setting out the particulars of the case, the claimant has to be as complete as possible. Also, the claimant is required to substantiate its claims in the writ of summons with evidence. Writs of summons in patent cases typically provide a technical background to the technical field at the heart of the dispute.

Being served a writ of summons, the defendant will be given the opportunity to file a statement of defence, which enables the defendant to raise defences and file exhibits that support its position. The defendant can furthermore avail itself of the opportunity to bring a counterclaim against the claimant. It can do so, for example, to claim the revocation of the IP right in question. The course of events to follow hinges on the proceedings themselves. The court will either schedule a hearing after the statement of defence, and after the claimant has had the opportunity to respond to the counterclaim, or it will allow the parties to continue the exchange of written arguments, after which a court hearing usually follows.

During the hearing, the parties will be able to argue their case before the court. Court sessions in standard IP cases generally last between two and four hours. The court may take longer to hear the parties if the complexity of the patent matter at hand merits such. For reasons of judicial efficiency, however, Dutch courts do not allow a full elaboration on every single one of the arguments exchanged between the parties, thereby preventing needless repetition of what has already been argued in the written statements.

Patent cases in which the validity of the European patent is challenged offer the patentee the opportunity to file auxiliary requests. Pursuant to such requests, the court may decide to uphold the patent in its present form or in amended form.

In the Netherlands, evidence in proceedings is usually presented by the production of documents. Similarly, witness testimony is usually produced by filing written statements. District courts have to schedule separate sessions in case they want to hear witnesses. While this is certainly an option, it rarely happens in IP cases.

vi Infringement

In the assessment of IP infringement claims, Dutch courts take heed of the relevant CJEU case law. Moreover, there is a significant corpus of case law on the scope of protection and criteria for infringement of copyright, trademarks, trade names and design rights.

In their adjudication of patent cases, the Dutch courts will interpret the claims in conformity with Article 69 of the EPC and the protocol belonging thereto. Dutch case law provides a number of criteria applicable to that Article (see Section II). Besides literal infringement, the Dutch courts can also establish infringement by equivalence.

In consonance with Supreme Court case law, the patentee's actions during the patent's prosecution can be a relevant factor in the assessment of the scope of patent protection.

vii Defences

In intellectual property infringement proceedings, the most important defences are those directed at the invalidity of the IP rights. The district court can deal with these defences in the same proceedings that involve the actual infringement. In preliminary relief proceedings, the preliminary relief court will make a provisional assessment of the validity of the IP right in question. Although the right cannot be invalidated for the Netherlands in these proceedings, infringement claims will be denied if the court considers it likely that the right will be found invalid in proceedings on the merits. Claims on the grounds of inequitable conduct or similar defences are not recognised within the Dutch system.

In patent cases, the validity of patents can be challenged on account of a lack of novelty or inventive step. This can be done in much the same way such challenges would be lodged with the European Patent Office.

viii Time to first-level decision

In IP cases, proceedings on the merits usually take around 12 to 16 months from the moment at which the writ initiating the proceedings is filed until the court renders a decision in the first instance. The Court of the Hague has established an accelerated regime for patent cases, which is known as the 'VRO-regime' in Dutch. This regime can be used for infringement claims and revocation actions. On the basis of this regime, the dates on which the substantive documents must be filed and on which the hearing will take place are set out in a fixed schedule before the proceedings are set to commence. Because the parties are bound to this schedule, a first instance decision can typically be handed down within 12 months of the date on which the writ of summons is filed. Decisions in preliminary relief proceedings can be rendered within a few weeks, and even sooner in cases of extreme urgency.

In cases involving a manifest infringement, causing irreparable harm to the rights holder, the Dutch system also allows for an ex parte injunction. Injunctions such as these can be issued without hearing the defendant, and can be obtained in just days.

ix Remedies

Remedies that are most often sought in Dutch IP cases are:

  1. injunctions;
  2. accountability relating to the trade and infringing products (prices, quantity of products, customers, suppliers, etc.);
  3. destruction of the products;
  4. damages or the surrender of profits; and
  5. compensation of all reasonable and fair legal fees.

Relief by the court will typically be granted notwithstanding appeal, meaning that the decision will be enforceable immediately once it has been served on the defendant and before a decision on appeal is available. If the first instance decision is overturned on appeal, the party enforcing the first instance decision will be liable for the damages it thereby caused.

A cross-border injunction for countries in the EU for infringements on an EU trademark or Community design may be granted by a Dutch court if the defendant has its office in the Netherlands. A cross-border injunction for the whole Benelux may be granted for a Benelux trademark or design infringement.

In the same way, a cross-border injunction for all EU countries in copyright cases may be granted by Dutch courts that base those decisions on case law of the European Court of Justice that several copyright definitions are harmonised in the EU.

In the Netherlands, the losing party can be ordered (if claimed) to compensate all reasonable and fair legal costs and other expenses of the winning party. The starting point is reimbursement of costs that were actually incurred within certain guidelines, unless actual costs are not reasonable and proportionate.

The Netherlands is perceived as being a cost-effective jurisdiction for enforcing IP rights.35 The Netherlands ranks very highly for patent enforcement and challenge. This is no surprise because the Netherlands has for a long time been regarded as a heavyweight jurisdiction in this area of IP. Its specialist judges are highly valued, it is very cost effective and its practitioners are very experienced.36

x Appellate review

Dutch law provides that decisions in the first instance are open to appeal. There are four courts of appeal in the Netherlands, all of which can hear IP cases. Like the District Court of The Hague, however, the Court of Appeal in the Hague has exclusive jurisdiction to hear certain cases, which is why it can boast the most experience in IP-related matters. Under the Dutch system, appeals are de novo. The Court of Appeal has complete jurisdiction to decide on both the main claim (e.g., infringement) and the counterclaim (invalidity or revocation), such being subject to the parts of the decision that the parties take issue with. In such appeal proceedings, parties are free to adopt new positions and adduce new evidence.

As is the case in first instance proceedings, most proceedings are conducted through the exchange of written briefs between the parties, after which the case will be heard by the Court of Appeal. Defendants on appeal also have the opportunity to file a counter appeal, in which they can advance their own grievances to the decision rendered in the first instance. Appeal cases are typically handled by a panel of three judges, taking anywhere between 16 and 20 months from the moment the appeal is filed until an appeal decision is reached.

xi Alternatives to litigation

Dutch law also allows for alternative dispute resolution. However, IP disputes are not often alternatively resolved.

V TRENDS AND OUTLOOK

It is hard to predict when the unified patent system will enter into force. The German ratification has been delayed owing to a case pending in the German Constitutional Court on the UPC's compatibility with the German Constitution. There is speculation that a ruling will be issued in 2019. On the basis of this system, applicants will have the opportunity to obtain a single unified patent in Europe and to enforce this patent before one Unified Patents Court. This system is anticipated to change the patent litigation practice dramatically.


Footnotes

1 Wim Maas is partner and head of IP and Maarten Rijks is partner and head of trademarks, copyrights and designs at Taylor Wessing Netherlands.

2 Case C-310/17.

3 Court of Appeal Arnhem-Leeuwarden, 23 May 2017. ECLI:NL:GHARL:2017:6697 (Heksenkaas).

4 CJEU 13 November 2018, ECLI:EU:C:2018:899 (Levola Hengelo v. Smilde Foods).

5 District Court The Hague 13 December 2017, ECLI:NL:RBDHA:2017:14483 (Kwantum v. Vitra).

6 Kwantum is represented by Taylor Wessing.

7 Court of Appeal Amsterdam 9 October 2018, ECLI:NL:GHAMS:3747 (Dobla v. Chocolate King).

8 Court of Appeal Amsterdam 29 January 2018, IEF 18212 (Montis v. Klaver).

9 Benelux Court of Justice 18 July 2018, (Montis v. Goossens).

10 CJEU 20 October 2016, C-169/15.

11 Geschillencommissie Auteurscontractenrecht 27 July 2018, dossier number 113417 and 113462.

12 District Court of the Hague of 18 July 2018, ECLI:NL:RBDHA:2018:8777.

13 District Court of The Hague 6 June 2018, ECLI:NL:RBDHA:2018:6542.

14 District Court of The Hague 22 August 2018, ECLI:NL:RBDHA:2018:10046.

15 District Court of The Hague 1 August 2018, ECLI:NL:RBDHA:2018:9236.

16 See District Court of The Hague 10 October 2018, ECLI:NL:RBDHA:2018:12029 and judgments of the District Court of The Hague 5 September 2018, ECLI:NL:RBDHA:2018:10700, ECLI:NL:RBDHA:2018:10699.

17 District Court of The Hague 11 April 2018, ECLI:NL:RBDHA:2018:4127 (Sandoz v. AstraZeneca).

18 Court of Appeal of The Hague 27 November 2018, IEF 18122 (Sandoz v. AstraZeneca).

19 Court of Appeal of The Hague 8 May 2018, ECLI:NL:GHDHA:2018:1105 (Fresenius Kabi v.Eli Lilly).

20 District Court of The Hague 22 March 2017, ECLI:NL:RBDHA:2017:2721, the District Court of The Hague 27 September 2017, ECLI:NL:RBDHA:2017:10934 and the District Court of The Hague 18 October 2017, ECLI:NL:RBDHA:2017:11759 (Philips v. Asus).

21 Asus is represented by Taylor Wessing.

22 Van Haren is represented by Taylor Wessing.

23 Preliminary Relief Court The Hague, 18 April 2013 (Louboutin v. Van Haren).

24 CJEU 12 June 2018, C-163/16, ECLI:EU:C:2018:423 (Louboutin v. Van Haren).

25 District Court of The Hague 6 February 2019, ECLI:NL:RBDHA:2019:930 (Louboutin v. Van Haren).

26 Literally translates as 'Witches' Cheese'.

27 Literally translates as 'white woman cheese'.

28 Literally translates as 'white woman'.

29 Advocate General Supreme Court 26 January 2018, IEF 17464 (Heksenkaas v. Witte Wievenkaas).

30 Supreme Court 13 July 2018, ECLI:NL:HR:2018:1215 (Heksenkaas v. Witte Wievenkaas).

3131 Court of Appeal Amsterdam 5 February 2019, ECLI:NL:GHAMS:2019:262 (Hauck v. Stokke).

32 District Court of The Hague 18 December 2018, IEF 18163 (Lacoste v. Hema).

33 Supreme Court 28 September 2018, ECLI:NL:HR:2018:1775 (Dow v. Organik).

34 Court of Appeal The Hague 20 February 2018, ECLI:NL:GHDHA:2018:272 (Arpe v. Happy Cocooning).

35 TW Global Intellectual Property Index, p. 11.

36 TW Global Intellectual Property Index, p. 37.