The Netherlands is generally considered one of the main jurisdictions in Europe for protection of intellectual property, including trademarks. The Dutch courts rank among the best in Europe, and this certainly also holds true for the handling of trademark cases. The District Court of The Hague has exclusive jurisdiction in cases concerning a European Union trademark (EUTM). Litigation based on Benelux trademarks is also handled by a number of other courts in the Netherlands, which all generally have extensive experience in this field.
Since the introduction of the former Benelux Trademark Act in 1971, Dutch judges have dealt with numerous national and international trademark cases. Also, many principles of the EUTM are based on the experiences of the Benelux countries. Apart from the judges, the Netherlands also houses a substantial number of excellent trademark specialist lawyers and very knowledgeable trademark attorneys (agents).
The Dutch procedural system provides for relatively quick and efficient enforcement proceedings, which is another reason that makes the Netherlands a favoured venue for trademark litigation. The Benelux Convention on Intellectual Property Rights (BCIP), which entered into force on 1 September 2006, provides the basis for the enforcement of trademarks in the Netherlands, Belgium and Luxembourg. For each of these jurisdictions, national procedural rules determine the procedures and remedies available. For the Netherlands, these are laid down in the Dutch Code of Civil Procedure. Although formally decisions of one court do not serve as binding precedent for other courts, in practice courts do take account of decisions in the other jurisdictions.
The Netherlands is also a favourable jurisdiction for intellectual property (IP) holding companies and houses a number of regional, European and even global headquarters of renowned international brand owners.
II LEGAL FRAMEWORK
Two types of registered trademarks are acknowledged in the Netherlands, namely Benelux trademarks and European Union trademarks.
Belgium, the Netherlands and Luxembourg, which form the Benelux region, have had a uniform trademark protection law since 1971. On 1 September 2006, the Benelux Trademarks Act and the Benelux Designs Act were merged into the BCIP. The BCIP will be amended before 14 January 2019 to implement the Trademark Regulation (EU 2015/2424).
Further, because the Netherlands is a member of the Madrid Protocol, trademark protection can also be obtained via international registrations designating Benelux.
Benelux trademarks are registered at the Benelux Office for Intellectual Property (BOIP). An EUTM is registered at the European Intellectual Property Office (EUIPO). International registrations designating Benelux, registered at the World Intellectual Property Organization (WIPO), are also valid in Benelux.
The Dutch Trade Name Act provides protection to trade names. Trade name rights are established by the actual use of that name in the course of trade. Registration is not required to obtain trade name rights. However, the majority of trade names are registered in the Trade Register of the Dutch Chamber of Commerce.
The Dutch domain names authority is the Foundation for Internet Domain names registration in the Netherlands (SIDN). Applications for top-level domain names with the .nl extension are made to, and granted by, SIDN.
iii Substantive trademark law
To obtain trademark protection under the BCIP, a trademark must be registered with the BOIP in The Hague. An EUTM must be applied for at the EUIPO, and an international registration designating Benelux must be carried out through the WIPO. Any individual or legal entity may apply for a trademark registration. Trademarks can be registered in the name of more than one party.
A straightforward trademark registration procedure will take about three to four months (from application to registration). After the application is filed, the BOIP will examine the application on absolute and relative grounds. Once accepted, the application will be published for opposition purposes. Relative grounds for refusals (such as irregularities in the classification) may be remedied by the applicant. The BOIP usually provides a term of one month for this, which may be extended. If, upon examination, there is an absolute ground for refusal, the BOIP will provisionally refuse registration of the trademark. The applicant will be given a three-month period to file a response to this decision. In Benelux, it is also possible to register individual trademarks using the accelerated procedure enabling a trademark registration to be obtained within 24 hours. This registration is immediately granted and published, but still remains open for opposition by third parties or refusal on absolute grounds by the BOIP for the applicable periods. The official fee for filing an application in up to three classes is €248. The fee for each additional class above the third is €39. The official fee for trademark registration using the accelerated procedure is €447.2
The Benelux trademark regime, like most of its surrounding jurisdictions, is a registration system rather than a first-use system. Therefore, in principle, non-registered trademarks are not protected in Benelux. This may only be different if the trademark is recognised as a well-known trademark within the meaning of Article 6 bis of the Paris Convention.
iv Collective marks and certification
It is possible to register collective trademarks in Benelux. Since October 2017, it has also been possible to register a collective European trademark, referred to as a 'certification mark'. These trademarks distinguish certain collective characteristics of goods and services (e.g., seals of approval or logos for the environment), rather than the goods and services themselves. Just like the collective trademarks in Benelux, the EU certification mark relates to the guarantee of specific characteristics of certain goods and services. It indicates that the goods and services bearing the mark comply with a given standard set out in the regulations of use and controlled under the responsibility of the certification mark owner, irrespective of the identity of the undertaking that actually produces or provides the goods and services at issue and actually uses the certification mark. Applicants for certification marks have to include a statement in their applications to the effect that they are applying for an EU certification mark. A certification mark cannot be owned by a person or company carrying out a business involving the supply of goods and services of the kind certified. The owner of a certification mark is precluded from using the mark for the certified goods or services covered. A certification mark cannot be filed for the purpose of distinguishing goods or services certified in respect of the geographical origin. The official fee for registering a collective mark is €385.
v Trade names, geographical indications, domain names
The Dutch Trade Name Act prohibits the use of names that are identical or similar to trade names or trademarks already being used by another company if the use creates the risk of confusion among the public, taking into account the nature and location of the businesses. Trade names are usually registered with the trade register of the Dutch chamber of commerce. However, this is not required nor is it sufficient to enjoy protection. Dutch trade name law applies if a name is actually used in the course of trade, regardless of whether or not it is registered. Trade names can be transferred, but only as part of the business it is associated with.
If a sign identifies a product as originating from a given place, it may be protected as a geographical indication. To obtain this protection, it is essential that the qualities, characteristics or reputation of the product relate directly to the indicated place of origin. A protected geographical indication enables those who have the right to use the indication to prevent its use by a third party if the product of this third party does not meet the requirements or standards of the geographical indication. However, a protected geographical indication does not give the holder the right to prevent someone from making a product using the same techniques as those set out in the standards for that indication. Protection for a geographical indication is usually obtained by acquiring a right over the sign that constitutes the indication.
As indicated, an .nl domain name can be obtained by applying for one not already registered with SIDN. When registering a domain name, the applicant will enter into an agreement with a registrar, who will register the domain name with SIDN as intermediary on behalf of the applicant. The domain name holder enters into a direct agreement with SIDN and the domain name is registered for an indefinite period. The agreement and registration may be terminated by SIDN in the event the registrant does not fulfil the obligations set out in the agreement and fails to remedy this shortcoming within 30 days of being notified to that effect by SIDN. The obligations of the registrant towards SIDN are set out in the SIDN general terms and conditions and include a proper use of the domain name.
SIDN provides a dispute resolution procedure for .nl domain names in accordance with WIPO/ICANN policies. The dispute resolution procedure provides a quick and cost-efficient way for the owner of a trademark or trade name to order the transfer of a domain name that is confusingly similar to the owner's mark or name where that domain name was registered in bad faith. Disputes relating to domain names may be brought before a Dutch court.
III REGISTRATION OF MARKS
i Inherent registrability
Any sign that is capable of distinguishing goods or services as originating from a certain company can be registered as a trademark (e.g., words, symbols, colours, three-dimensional shapes (of a product or packaging) and sounds). The BOIP may refuse registration, in particular if the sign:
a is descriptive;
b lacks distinctive character;
c is misleading or in violation of public policy;
d is an official emblem or flag of a state or international organisation; or
e has a shape that overlaps with any other intellectual property right, such as a patent or design right.
A sign is descriptive if, for example, it describes or recommends the product or service for which the trademark application is filed. A descriptive sign automatically lacks distinctive character. A non-descriptive trademark can also be non-distinctive, for example where it is a slogan or a single colour. These signs may be registerable as a trademark only after having acquired distinctive character with the relevant sector of the general public through intensive use.
Usually, the BOIP issues a provisional refusal of protection within two months of the filing of the application. The applicant is granted a three-month period in which to file an appeal with the BOIP against such a refusal, which may be extended once only up to a total of six months.
ii Prior rights
The BOIP does not refuse the registration of a trademark because of likelihood of confusion with earlier registrations. It is up to the holders of earlier registrations to initiate opposition proceedings before the BOIP to prevent the application from maturing into registration, or alternatively, after registration, to initiate cancellation proceedings to remove a trademark from the register.
The owner of a registered trademark that is valid in Benelux has the right to prohibit others from using a younger sign if the younger sign is:
- identical and used for identical products or services in commerce;
- identical or similar and used for identical or similar products or services, if that use may cause confusion;
- identical or similar and used for products or services different from those for which the prior trademark is registered, if the trademark has a reputation in Benelux and the use of the younger sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trademark;
- a trademark filed for dissimilar goods or services if that mark takes unfair advantage of, or is detrimental to, the reputation or distinctive character of the invoked mark, where that prior mark is well known in Benelux; or
- used for purposes other than to distinguish a product or service (i.e., not used as a trademark) if this use, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the prior trademark.
iii Opposition proceedings
Under the BCIP, trademark owners may oppose an application for registration of a conflicting sign before the BOIP. The aim of these administrative opposition proceedings is to establish at an early stage whether the opposed application should be denied for reason of the sign applied for being confusingly similar to the opposing party's earlier trademark registration. Furthermore, the opposition system is meant to encourage parties to reach an amicable settlement. Oppositions may be lodged against new trademarks filed for goods and services in any classes. Under Benelux trademark law the applicant or owner of a prior trademark can file an opposition against the application for:
- an identical trademark filed for the same goods or services;
- an identical or similar trademark filed for the same or similar goods or services, where there exists a likelihood of confusion among the public; or
- a trademark that can cause confusion with an existing trademark that is well-known within the meaning of Article 6 bis of the Paris Convention.
Third parties have up to two months from the publication to file an opposition to the registration. The opposition proceedings start (once found admissible by the BOIP) with a two-month cooling-off period. This cooling-off period gives the parties an opportunity to seek an amicable solution to the dispute. The cooling-off period may be extended upon mutual request. Once the proceedings start, the opponent has a two-month period to file the explanations of the grounds for the opposition, after which the applicant is given two months to file its observations in response. Also, the applicant may request proof of use of the opposing trademarks. The official fee for filing an opposition is €1,040. This fee includes an opposition based on three trademarks.
iv Invalidity or revocation proceedings
Cancellation proceedings may be initiated by any interested party. This entails either proceedings before the BIOP or court proceedings on the merits, based on absolute grounds, relative grounds or nullity.
Invalidity or nullity proceedings are aimed at having the trademark against which this action is directed declared invalid or nullified. These are typically court proceedings, initiated by filing a request with the competent Dutch court to declare a trademark invalid (null and void). Following the recent implementation of the Trademark Regulation, these proceedings are now also possible before the BOIP. A nullity action can be based on one of the following reasons:
- conflict with an earlier registration;
- the trademark has not been used genuinely (non usus);
- it lacks distinctive character;
- it is too descriptive;
- it has become a common or generic term;
- it has become misleading through use; or
- the trademark was registered in bad faith.
The final reason of those listed above may only be raised in court proceedings; the legislation to also apply this in BOIP proceedings is still pending (currently expected to come into force in January 2019).
Final decisions by the BOIP (e.g., refusals, as well as decisions in opposition, cancellation or invalidity proceedings) can be appealed at the Benelux Court of Justice. The appeal must be initiated within two months of the final decision.
IV CIVIL LITIGATION
In the Netherlands, there is no specialised court for trademark disputes as in Germany and the United Kingdom, for example. However, most of the district courts and courts of appeal have judges more or less specialised in IP matters, including trademark matters. In addition, the District Court of The Hague has specialised judges because this court has exclusive jurisdiction in EUTM matters.
ii Pre-action conduct
In the Netherlands, although it is not required by law, a cease-and-desist letter is usually sent prior to starting court proceedings (except if an ex parte injunction or seizure is requested). The aim of this letter is to end immediately the infringement, or to seek a settlement out of court. Furthermore, a response to the letter may provide insight into the possible counterarguments presented by the alleged infringer, which may help in assessing the strength of the case. Any such counterarguments must be included in the writ of summons served if, ultimately, legal proceedings are started. Failure to do so risks the claims being judged inadmissible.
For the purpose of settlement, the cease-and-desist letter usually contains demands that are similar to or go beyond those that can be obtained in interim relief proceedings, such as:
- immediately stopping the infringement;
- recognition of the rights holder's rights and desisting from future infringements;
- provision of an accountant's statement to calculate damages, such as the number of products purchased and sold, turnover, costs and profit made;
- contact details of the supplier of the infringing goods; and
- an undertaking to pay damages and legal costs.
It may often also contain a penalty clause for each violation of the undertakings. In practice, more often than not, a settlement is reached on the basis of the demands in the cease-and-desist letter, which is usually a more cost-effective outcome for the parties than resorting to court proceedings.
iii Causes of action
Court proceedings in trademark cases will usually be based on an alleged trademark infringement of the types already discussed in Section III. Mostly this will involve action against the use of an identical or similar sign for identical or similar products or services, causing risk of confusion. Less often, an action will be brought based on use infringing on a well-known trademark. As said, the owner of a prior trademark or trade name can also initiate proceedings against the use of a confusingly similar trade name based on the Dutch Trade Name Act. In the case of a domain name, proceedings can be based on either trademark law or trade name law, depending on the infringed right concerned. Also, with regard to other unlawful acts, such as misleading advertising or unlawful copying of trade dress, an action can also be brought based on unfair trade practice, misleading advertising, unfair competition or unlawful act (tort) in general.
iv Conduct of proceedings
The Dutch legal system does not have a concept of full discovery similar to that in the United States or similar jurisdictions. In any court case, the court will base its judgment only on the facts as presented to it by the parties. In trademark infringement cases, a plaintiff may opt for either summary proceedings or proceedings on the merits. Summary proceedings consist of a writ of summons by the plaintiff, including the claims and their factual and legal grounds, followed by a court hearing during which the case is pleaded by the legal representatives of the parties (or in the case of the defendant, in summary proceedings – this may be the defendant itself). Summary proceedings may take approximately six to 10 weeks from serving the writ until the judgment is rendered. A judgment obtained in summary proceedings based on trademark infringement must be followed by proceedings on the merits within a reasonable period determined by the court (in accordance with the TRIPS Agreement), usually six months, or (often) by the parties reaching a settlement based on the summary judgment.
Main proceedings are more elaborate and require at least one round of written arguments, by both plaintiff and defendant, and possibly a second round, and in most cases these end with oral pleadings before a judgment is rendered. Main proceedings may also include incidents, in particular interim orders by the court regarding the provision of additional evidence, such as witness hearings or expert reports. Typically, the main proceedings, subject to incidents, may take between six and 12 months until judgment.
A trademark holder may bring several claims, the most obvious claim being an injunction, that is to say, a court order to cease and refrain from any infringing acts. Other possible claims include a recall of infringing products from the market and surrender or destruction of infringing products. Also, the infringer may be summoned to provide information, usually attested by an accountant's statement, to enable the plaintiff to calculate the damage sustained as a consequence of the infringement, such as the number and price of products purchased and sold, the turnover, costs and profit made. In addition, it may be ordered to provide contact details of the supplier of the infringing goods. To ensure that the court order awarding any or all these claims is executed, the court usually determines that an incremental penalty sum is forfeited if the infringer does not execute the court orders within a certain period, set by the court.
A rights holder may also claim compensation of damage, surrender of profit made from the infringement or compensation of legal costs incurred. A rights holder will need to substantiate the actual damage sustained (e.g., loss of profits) and demonstrate that this is attributable to the infringer. It is not possible to claim or obtain punitive damages in the Netherlands. Only the damage actually suffered may qualify for compensation.
In the case of a trademark infringement, a rights holder may bring a separate claim for surrender of profits made by the infringer from the sale of the infringing products. If the infringement is made in bad faith, both damage compensation and surrender of profit may be awarded cumulatively. A claim for damage compensation or a claim for surrender of profits may be brought in proceedings on the merits.
In both summary and main proceedings, a claim may be brought for (partial) compensation of legal costs incurred. Any party in legal proceedings concerning the enforcement of an IP right may claim compensation of all reasonable and proportionate legal costs and other expenses (such as expert reports and the cost of accountants) actually made. Dutch courts use guidelines for cost awards in IP proceedings (except patent cases), which, depending on the complexity of the case, vary from €6,000 to €15,000 for summary proceedings to between €8,000 and €25,000 for main proceedings. If the parties have agreed on the cost award, the court usually awards the agreed amount to the prevailing party.
V OTHER ENFORCEMENT PROCEEDINGS
Pursuant to the EU Anti-Piracy Regulation (608/2013), it is possible for trademark owners to involve the customs authorities in the Netherlands to prevent counterfeit and other infringing goods from being imported into or exported from the EU market. At the request and instruction of a trademark owner, customs will monitor incoming shipments and involve the rights holder if they come across a shipment that is suspected to be infringing on the right holder's trademark. Customs will provide photos and sometimes samples for the right holder to assess whether this is indeed the case. If so, the counterfeit can be seized and destroyed.
Under Dutch law, trademark infringement is also a criminal offence and, as such, it can also be actioned by the public prosecutor, rather than through a civil action by the trademark holder. However, it is at the discretion of the prosecutor whether or not to act upon a notification of infringement and, in practice, it will often be that priorities are different and the prosecutor does not opt to take action (except perhaps in cases of widespread infringements involving a criminal organisation or where public health is at real risk).
VI RECENT AND PENDING CASES
An interesting recent trademark case involves the well-known fashion designer Christian Louboutin enforcing his trademark on red soles on high-heeled women's shoes against Van Haren, a Dutch company that sells budget shoes. Louboutin claimed that Van Haren infringed his Benelux trademark by also selling high-heeled women's shoes with a red sole. The District Court of the Hague referred a prejudicial question to the Court of Justice of the EU (CJEU). The question was whether the definition of 'shape' within the meaning of Article 3(1)(e)(iii) of the EU Trademark Directive (signs consisting exclusively of the shape that gives substantial value to the goods) is limited to three-dimensional elements of a product or can also include two-dimensional, and not shape-related, characteristics of the goods, such as colour (in this case, a red shoe sole). In his opinion of 22 June 2017, the Advocate General took the view that Louboutin's red sole mark was neither a position mark nor a colour mark but qualified as a shape mark: 'a mark consisting of the shape of the goods and seeking protection for a colour in relation to that shape'.
On 12 June 2018, however, the CJEU concluded that the mark at issue does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration. The CJEU considered that a sign, such as that at issue in the main proceedings, cannot be regarded as consisting 'exclusively' of a shape where, as in the present instance, the main element of that sign is a specific colour designated by an internationally recognised identification code. Thus, the outcome of the CJEU's judgment in the much discussed Louboutin case is that a mark consisting of a colour applied to the sole of a shoe is not covered by the above-mentioned prohibition of registration of shapes as trademarks. It is now up to the Dutch court to decide on the infringement issue in this case, taking into account the CJEU's guiding conclusions.
Another relevant Dutch trademark case in the past year has been between the Dutch companies Levola and Fanofinefood. The first is the producer of a spreadable cream cheese dip known and sold as 'Heksenkaas' (witches' cheese). The latter brought a similar cream cheese dip to the market named 'Witte Wievenkaas' (white women's cheese). Levola opposed the latter's trademark application. The Court of Appeal of The Hague agreed to deny the application because of the conceptual similarities. According to the court of appeal, both signs refer to 'magical, female and malicious creatures'. In Dutch mythology, 'witte wieven' are mostly portrayed as white, female ghosts, who live alone and frighten people. Therefore, the court argued that the term 'witte wieven' will be interpreted by a significant part of the public as referring to witches. Therefore, it considered the marks confusingly similar.
However, this Court of Appeal decision was successfully appealed and overturned by the Supreme Court in its judgment of 13 July 2018. The Supreme Court was not convinced that a significant part of the Dutch public may be considered to be knowledgeable about the meaning and connotations of the term 'witte wieven'. The case was referred back to the Court of Appeal of The Hague for reconsideration.
High hopes for high heels: looking ahead to next year, it will be interesting to see the final decisions to be rendered by the courts in The Hague in both the Louboutin and the Witches' Cheese cases. Also, further implementation of the revised Trademark Regulation into the BCIP will come with the introduction of bad-faith registration as an extra ground in invalidity or cancellation proceedings before the BOIP. This legislative change is currently expected to take effect by mid January 2019 and is a material change in Dutch trademark law, further redefining the lines of trademark law procedurally, broadening the options for trademark holders – and bringing a smile to brand owners' faces: say cheese!