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Print version8a. Civil action
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Article 13 of the Uniform Benelux Law (UBL) organises this protection in the field of civil law. This has been modified following a First Council Directive dated December 21, 1988, which was based upon the trademark legislation of the member states.
Definitions
Article 13, A, 1, UBL defines situations wherein the trademark's holder has an exclusive right of intervention. Article 13, A, 2 UBL clarifies paragraph 1 in summing up all so-called actions of infringement.
The trademark holder may thus introduce an act of opposition against (Art. 13, A, 1, UBL):
a. Any use which, in business life, may be made of the trademark in respect of the products in respect of which the trademark is registered;
b. any use which, in business life, may be made of the trademark or of a similar sign in respect of the product of which the trademark is registered or in respect of similar products where there is, in the mind of the public, a risk of association between the sign and the trademark;
c. any use which, in business life and without just cause, may be made of a trademark which has the benefit of a reputation within the Benelux territory or of a similar sign in respect of products which are dissimilar to those in respect of which the trademark is registered, where the use of this sign would unduly derive benefit from the distinctive character or from the reputation of the trademark or would be detrimental to them;
d. any use which, in business life and without just cause, may be made of a trademark or of a similar sign otherwise than for the purpose of distinguishing products, where the use of this sign would unduly derive benefit from the distinctive character or from the reputation of the trademark or would be detrimental to them.
The use whereto one refers should be made in business life, in other words it concerns the use related to a company, to a profession or to each other activity which has not been performed in private life and whereof the object is to obtain an economic advantage.
As a result paragraphs a and b protect the distinctive function of the trademark as far as these paragraphs are applied to similar and/or identical products and paragraphs c and d protect the economic functions of the trademark.
The only exceptions to the practice of this exclusive right are indicated by Art. 13, A, 6 UBL and allow a third party to use this right in business life:
a. of his name and of his address;
b. of statements relting to the type, to the quality, to the quantity, to the intended purpose, to the value, to the geographical origin, to the time of production of the product or to other characteristics thereof; In reality cases of clashing interests are rather rare if the trademark is not made out of a geographical indication.
c. of the trademark where this is necessary in order to state the intended purpose of a product, especially as an accessory or separate part.
Otherwise, as mentioned above, usage as discussed above will only result in an infringement when done following one of the possible ways mentioned in article 13, A, 2, UBL.
First attack of the trademark: protection of the trademark against all identical signs for identical products (art. 13, A, 1, A UBL)
This article suffices in itself and aims at the traditional way of forgery of trademarks. Thus it does not require much further explanation.
It should be noted that the licensee using the trademark against the conditions stipulated in the licensee contract and without the holder's consent, will be considered a counterfeiter.
Otherwise, the notions "type Y" or "genre X" meant to avoid counterfeiting, are without any effects.
Finally, article 13, under A, 9° UBL refers to the exhaustion of the right within the European Economic Union (EEU) as it has been attributed by the famous CENTRAFARM decision of the Court of Justice of the European Communities (CJEC) dated 31/10/1974. In short, once the trademark holder (or anyone having his consent) has introduced authentic products onto the market of the EEU (wherein is require_onced Norway, Iceland and Liechtenstein), he is not authorised any further to call upon his right (besides some exceptions) to oppose to the ultimate commercialisation of his product in another country. On the contrary, the commercialisation outside the EEE does not deprive him of the rights to oppose to the import within the EEE.
The exceptions allowing the holder to oppose to the ultimate introduction to the market should be based upon legitimate motives by the holder, being essentially the modification and alteration of the product's condition.
Second type of attack: protection of the trademark against all resembling signs, for identical or similar products (art. 13, A, 1, B UBL)
Art. 13, A, 1, b foresees that the trademark's holder may oppose against the use of such a sign when 3 conditions are met:
- use of an identical or similar sign;
- use of identical or similar products;
- when there exist, in the mind of the public, a risk of association or rather of confusion.
The judge should base his opinion upon the trademarks as filed.
Concerning the first trademark, his appreciation results from the fact that the trademark's right results exclusively from its filing (Art. 3, 1 UBL). As a result, the judge should refer to what has been filed instead of referring to distinctive elements which have not been filed.
Concerning the second trademark and in case it has not yet been filed, the judge should investigate the trademark being used.
Otherwise, the resemblance is assessed at the moment of infringement (and not at the moment of filing).
All kinds of resemblance (visual, auditive, intellectual) should be taken into account by the judge. Similarly, the judge should base his opinion upon the trademark as a whole (this being the way in which the trademark is perceived by the public) and not by its elements seperately.
The judge should refer to the resemblances and not to the differences between the signs, in other words, whenever the judge decides that the distinctive elements of the first trademark are recaptured in the second trademark (even when differences are secondarily), infringement is to be declared.
Finally, the judge should take the average consumer's place in order to take his decision.
Particular cases of complex, composed or weak trademarks and translations
- A composed trademark is a trademark consisting of elements which, separetely, belong to the public domain. In such cases, protection is only applied to the totality and not to each isolated element, even when it is essential. Only full copies can be prosecuted.
- On the contrary, since the trademark is composed of elements of which some belong to the public domain for being generic or descriptive, others, however, are being distinctive, so that the assessment of infringement will be more subtle and often it will depend upon each case individually.
- Finally, a weak trademark is a trademark that has an even weaker distinctive force. These are however valid whenever they are neither generic nor descriptive. The differential criterion between weak, generic and descriptive trademarks lies in the embarrassment for the competitors in introducing their product to the public.
- For translations, two different cases should be distinguished:
the translation in a foreign Benelux language is treated in art. 13, C, § 2 which states "the assessment of the similarity resulting from translations, where the case involves one or more languages foreign to the aforementioned territory, shall be a matter for court". For the mostly used language, namely English, the courts of justice (esp. the Dutch ones) are more and more inclined to assess resemblance.
2) Resemblance between products
The general rule for all is: products are considered as being similar if there exist a sufficiently narrow link between them so that the public, noticing an identical or resembling trademark, may have reasons to believe that they are produced or commercialised by the same person, that is to say the trademark's holder (see decision Canon of the CJCE of 29/09/1998 C-39/97, Rec. p: I-5507).
The administrative classification used for the registration of trademarks does not involve an evaluation criterion.
Otherwise, it is obvious that the more products are to resemble each other, the more the difference between the signs will be.
3) The risk of confusion
There exist an important difference between the text of the Uniform Benelux law concerning the risk of association between trademarks and signs and the texts of the First Directive and the Rules concerning community trademarks referring to "the risk of confusion consisting of an association risk between the sign and the trademark".
The notion "risk of association" has been contributed by the Benelux Court of Justice in its UNION Arrest dated 20/05/1983 which states: "Trademarks and signs resemble each other, because, considering the particularities of each item, especially the distinctive potential of the trademark, the trademark and the sign, considered in itself and in their mutual relations, present on an auditive, visual or conceptual level a natural similitude to establish an association between the sign and the trademark".
When adopting the text of the Benelux law upon this subject (being anterior to community legislations), the legislator thought this notion which was defined by he Union's Arrest would also be taken into consideration on a community level.
However, the criterion taken from the Directive is more restrictive than the one specified by the Benelux Court (of justice). It is, however, obvious that the Benelux legislator does not want to counteract the community legislation. Article 13 A 1 b) UBL should thus be considered in the light of the European Directive and the Benelux criterion should therefore be identical to the community criteria.
As a result, the risk of confusion exists in the two following cases:
- the risk of direct confusion: cases wherein the public confuses the respective trademarks and believes the products and/or services to be produced by the same company;
- the risk of indirect confusion: cases wherein the public establishes a link between the holders of the sign and believes that the products and/or services result from compaies which are economically related.
Third attack upon the trademark: usage of a trademark referring to a wellknow trademark (art. 13, A, 1, C UBL)
The scope of protection is extended in a sense that it is not necessary that there exist identity or even similarity between products/services among competitive signs.
However, in order to benefit from this extended protection, several conditions are to be applied:
- the trademark should be well-known: this condition is to be appreciated according to the case; its reputation may be related to the general public or to a specialised professional field. The main aspects taken into consideration by the judge are part of the market held by the trademark, the duration of its use, its geographical extension, ...
- the holder of the well known trademark must have suffered from damage, which is mostly resumed in a reduction of the attractive potential of the well-known trademark based upon the use of the other trademark (e.g. use of the trademark MERCI for cats' food involves damage to the well-known trademark MERCI for chocolates). On the other hand, the holder of the well-known trademark is protected against use by a third party of an identical or similar sign even when he does not experience damage following this use whenever a third party unduly benefits from the trademark's distinctiveness and reputation. In such a case, indeed, the third party attracts the client by using the trademark's reputation which thus becomes a trademark of appeal.
- the holder of the second trademark does not have correct grounds for its use. This condition should be considered in a restrictive manner. Therefore, the fact that the second trademark is particularly appropriate for designating his products, the fact that the user of the second trademark previously used the sign at a non-commercial account, may be considered as being correct grounds.
The trademark's holder, being not necessarily well known, may oppose to the use of his trademark in case this use does not aim at characterising products or services but in case he unduly benefits from the distinctive character or reputation of the trademark or whenever it involves damage.
Except for the condition of reputation being not necessary for this case, conditions of application are identical to the ones above-mentioned under E.
There are mainly two cases for which this is applied:
- conflict between the holders of trademarks for cars and the garage owners who are no longer official franchise holders. Garage owners may, of course, use their trademark to indicate their activity but this indication may not give rise to the idea that they are part of the official network
- concerning domain names, the trademark's holder may oppose to the registration and the use of his trademark as a domain name by a third party.
As above-mentioned under paragraphs C to F, we have seen the different types of use against which the holder of the trademark right may oppose by an action of infringement. Article 13, A, 2 UBL specifies what should be understood by use and similarly it defines acts of infringement.
On the one hand, infringement is obviously only at stake to the extend wherein the trademark is used without the holder's consent.
On the other hand, good faith from the trademark user does not exclude infringement. The trademark holder may indeed prosecute each counterfeiter, even one handling in good faith. However, if bad faith is no condition for infringement, its proof may emphasise (penal or civil) sanctions towards the counterfeiter.
Now, how should one define use?
Article 13, A, 2 UBL states:
- the application of the sign to the products or to their packaging;
- the supply, marketing or holding of the products for these purposes under the sign;
- the import or the export of the products under the sign;
- the use of the sign in business papers and advertising.
The doctor prescribing a trademark medicine is obviously not an infringer.
On the contrary, someone who renews and reconditions a product and consequently commercialises it under the trademark name of origin is considered to be a counterfeiter.
The salesman who received an order for a trademark product and who delivers another product without saying it or who fills the packaging of a trademark product with another product, is a counterfeiter.
Similarly, trademark use as key word in an HTML version of a site - being thus not observed by visitors of said site but only by search engines - is known as infringement.
Civil sanctions
Benelux legislation (being different from France, Italy, ...) does not foresee the possibility of seizure-description in trademark subjects (whereas this proceedure exists for patents or copyrights).
Three types of measures can be ordered by court:
1. measures related to the suspension of infringement,
2. measures of restoration,
3. removal of an annulated or forfeited trademark.
1) Suspension
The first measure to be taken consists, of course, of the prohibition of use of the counterfeiting trademark (which counts for the whole Benelux territory, independent from the fact that it is a Belgian, Dutch or Luxembourg court who has pronounced this measure). Prohibition refers to the used sign, even when there is a slightly different filing.
Measures claiming property and destruction of counterfeit goods are foreseen by article 13 bis UBL.
Court may also order the infringer to write his clients to inform them upon their possession of counterfeit goods and to invite them to return these goods.
Measures of suspension may, of course, be accompanied by penalties.
2) Restoration
The most common form of restoration is the patent of damages and interests (Art. 13, A, 3 UBL) of which the evaluation should be generally based upon the lack of benefits, on the one hand, and the losses on the other hand. In Benelux law, damages and interests should be calculated from the date of filing onwards (but not before: see article 12, under A, 4th paragraph UBL), whereas for a community trademark, they are only calculated from the date of registration. Anyway, for the latter case a reasonable compensation may be attributed for the intermediary period.
An action of suspension of the realised benefits or the rendering of cause is possible (see Article 13, A, 4 UBL).
Article 13bis, 5 UBL allows court to order the counterfeiter to furnish all commercial information concerning the origin and destination of counterfeit goods.
Publication and repayment of judicial costs are also very often declared by court.
3) Removal
Article 14 D UBL does not foresee that instances of court immediately declare removal (complete or partial, following specific circumstances) of the counterfeit trademark.