Trade Marks & Copyright 2024 Comparisons

A trade mark in Belgium can be registered as a Benelux trade mark (protection in the whole Benelux region, ie Belgium, Netherlands and Luxembourg) or as an EU trade mark (protection in the whole EU territory including Belgium). Benelux trade marks are governed by the Benelux Convention on Intellectual Property (BCIP) and the responsible office is the Benelux Office for Intellectual Property (BOIP). EU trade marks are governed by Regulation 2017/1001 on the European Union trade mark (EUTMR) and the relevant office is the European Union Intellectual Property Office (EUIPO).

Copyright in Belgium is governed by Title 5 of Book XI of the Belgian Code of Economic Law (CEL). Title 6 governs copyright protection of software and Title 7 governs copyright protection of databases. These rules transpose EU law and must be interpreted in line with the corresponding EU Directives (Article XI.164, 1°–11° CEL).

The Belgian Code of Civil Procedure (CCP) contains specific rules applicable to procedures involving intellectual property rights.

Belgium is a member of the following self-executing (SE) or non-self-executing (NSE) treaties and conventions.

Copyright

The following govern copyright:

• Berne Convention for the Protection of Literary and Artistic Works (NSE);
• Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (SE);
• WIPO Copyright Treaty (NSE); and
• WIPO Performances and Phonograms Treaty (NSE).

Trade Marks

The following govern trade marks:

• Paris Convention for the Protection of Industrial Property (the “Paris Union Convention”) (SE);
• Madrid Agreement Concerning the International Registration of Marks (SE);
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (SE);
• Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (SE);
• Benelux Convention on Intellectual Property, as amended by the Protocols of 22 July 2010, 21 May 2014, 16 December 2014 and 11 December 2017 (SE); and

• Agreement on Trade-Related Aspects of Intellectual Property Rights (Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization) (the “TRIPs agreement”) (NSE).

The rights of foreign trade mark holders on the Belgian territory are governed by the BCIP (for Benelux trade marks) or the EUTMR (for EU trade marks) in conformity with the national treatment rule under the TRIPs agreement and the Paris Union Convention.

Foreign copyright holders claiming protection for a work in Belgium enjoy the same rights as national authors under the condition of reciprocity. This national condition of reciprocity is, however, not applicable to EU nationals. The Berne Convention also facilitates the international protection of works.

The BCIP distinguishes between the following:

• individual marks whose main function is to distinguish the goods and services of an undertaking from those of another undertaking and to enable the public to determine from which undertaking the goods/services originate (origin function);
• collective marks used by the members of an association to demonstrate that the goods or services come from a member of that association (typically producers with similar interests); and
• certification marks, also called “ warranty trade mark”, used to distinguish and certify one or more common characteristics (eg, quality criteria, production methods, material, etc) of given goods or services from different businesses.

Collective or certification marks should not be confused with geographical indications for agricultural products or foodstuffs originating from a specified region and for which a specified quality, reputation or other characteristics can be attributed to that geographical origin (EU Regulation 1151/2012), or for craft and industrial products with a given quality, reputation or other characteristic linked to their geographical origin (EU Regulation 2023/2411).

Types of Source Identifiers

Every conceivable sign can constitute a trade mark, subject to a number of legal conditions for trade mark protection (see 2.2 Essential Elements of Trade Mark Protection). The following are examples:

• word marks (including surnames);
• figurative marks;
• complex marks combining word and figurative elements;
• colour marks;
• shape marks;
• sound marks (electronic audio file or musical stave);
• holograms or moving images if their representation is included in an electronic file; and
• olfactory marks, taste marks, tactile or texture marks – a depiction or representation in the register may present problems of clarity, precision and accessibility.

Under Benelux trade mark law, all registered trade marks enjoy the same protection.

Well-Known Foreign Marks

Trade marks not yet in use or registered in the Benelux territory but well known in this territory pursuant to Article 6bis of the Paris Convention enjoy a certain level of protection and can be invoked against a Benelux trade mark.

In order to be registered and qualify for trade mark protection, a sign must be distinctive, legal, available and susceptible to depiction in the register.

Distinctiveness

Distinctiveness relates to the ability to distinguish the goods and services of an undertaking from those of another undertaking and to inform the public that the goods or services are originating from a particular undertaking (origin function) (examined on a case-by-case basis).

In principle, a trade mark should be inherently distinctive. However, a descriptive or non-distinctive sign can still be registered if the applicant submits evidence of acquired distinctiveness of the mark as a consequence of its use, taking into account:

• the market share held by the mark;
• the intensity, geographic scope and duration of the use;
• promotional expenses; and
• the mark’s recognition on the market by the relevant public.

Legality

Certain signs are not allowed as trade marks: for example, signs contrary to public policy or morality, signs likely to mislead the public regarding the nature, quality or geographical origin of the goods or services, etc.

Availability

The sign must be available for the goods or services for which the trade mark is registered. In certain circumstances and under certain conditions, prior use of the sign by a third party, eg, as a company or trade name, can also be an obstacle to obtain a valid trade mark or to use it.

Depiction in the Register

Depiction in the register is required to be made in such a way that allows the competent authorities and the public to determine the sign accurately and clearly (checking what exactly is protected as a trade mark),which is problematic for signs such as perfumes and tastes.

Under the BCIP, a registered trade mark gives its holder the exclusive right to use, or to authorise a third party to use, the protected sign.

The holder may transfer or licence their trade mark, oppose the registration of conflicting signs before BOIP, bring proceedings in court against third parties infringing the trade mark, and claim the cancellation of subsequent registrations of conflicting trade marks.

These rights persist throughout the term of the trade mark registration. An anti-circumvention right similar to Article 11 of the WIPO Copyright Treaty is not recognised in the Benelux region.

After five years following registration, a registration can be revoked for non-use if it has not been put to a “genuine use” within that period in connection with the goods or services in respect of which it is registered. This requires an actual commercial exploitation of the sign as a trade mark for these goods and services, ie, in accordance with its essential function and with a view of maintaining or creating a market share for the goods or services concerned. Purely symbolic or descriptive use will not be sufficient.

The trade mark holder may prevent revocation by evidencing proper reasons for non-use. Only circumstances making the use of the trade mark impossible or excessively difficult, and beyond the control of the trade mark holder, will be accepted as proper reasons. Unfavourable market conditions, unexpected lengthy negotiations or a temporary lack of success of the product are not considered proper reasons.

There is no requirement to use a symbol to denote a trade mark as registered. Some people use the ® symbol to show that a trade mark is registered and the TM symbol is sometimes used while registration is still pending. Not using them has no legal consequences.

Benelux law allows cumulation of IP protections. A trade mark can also be protected by copyright, provided the conditions for such protection are met, eg, slogans, character names, titles of works or magazines, shapes, or logos.

Save for bad faith registration, Benelux law does not limit the scope of trade mark laws because of copyright or other rights. However, the use of a trade mark that infringes copyright may be prohibited.

There is no statutory list of works eligible for copyright protection. Article 2 of the Berne Convention is not exhaustive. Subject to the conditions for copyright protection (see 3.2 Essential Elements of Copyright Protection), the eligible works include, further to the liberal arts, software, databases, websites and designs.

A “work” qualifies for copyright protection subject to two conditions (in line with the CJEU’s case law in, inter alia, Cofemel, C-683/17):

• originality – the work must be the author’s own intellectual creation reflecting his personality and expressing his free and creative choices; and
• form– the work must be the concrete expression of said creation, a subject matter identifiable with sufficient precision and objectivity.

The original author is the natural person who created the work. No formalities are required. Transfer of copyright on a work made by an employee must be stipulated explicitly, with a few notable adjustments (eg, software).

No authorship can (until now) be recognised for exclusively AI-generated works or other works created without human intervention: only natural persons can be authors. The “originality” condition requires “reflection of personality” (see 3.2 Essential Elements of Copyright Protection).

The author has the right to claim or refuse paternity of their work. They can choose a pseudonym or publish anonymously (as regards the term of protection, see 3.5 Term of Protection and Termination), in which case the publisher shall be deemed, vis-à-vis third parties, to be the author.

Joint authorship arises when two or more persons make the work together, in concertation and common perspective. They do not have to contribute equal parts, nor to contribute simultaneously. The contribution needs to be inseparable from the work, in the sense that the work as a whole would have been different without it.

Where copyright is undivided (individual contributions unclear), its exercise shall be governed by agreement, failing which none of the authors may exercise the right separately (subject to judicial decision in case of disagreement). However, each author can sue separately for infringement and claim damages for their individual share.

Where the individual contribution of each author can be identified clearly, the author may not co-operate with anyone else regarding that contribution unless otherwise agreed. However, a separate exploitation of the contributions is allowed if not prejudicing the joint work.

Authors own “exploitation rights” and “moral rights”. Exploitation (“economic” or “patrimonial”) rights comprise the right of reproduction, the rights to authorise adaptations/translations, to authorise rental and lending, to communicate the work to the public and a distribution right, which can be exhausted. Moral rights are inalienable and comprise the rights to disclose the work, to claim or refuse paternity and to have the work respected and to oppose any alteration.

No distinct synchronisation right exists under Belgian law. Synchronisation is considered part of the reproduction right sensu lato, requiring the author’s authorisation.

The term of protection is 70 years from the author’s death, to the benefit of the person appointed by the author, or his heir(s). The term of protection for works of joint authorship is 70 years from the death of the longest surviving author. For anonymous or pseudonymous works, the term of protection is 70 years from the publication of the work. These statutory rules apply to all types of rights (economic and moral) and works.

Any person whose name (or acronym by which that person can be identified) appears as such on the work, on a reproduction or a communication thereof to the public, benefits from a presumption of authorship, unless proven otherwise. No special notice of copyright ownership is required nor are there any consequences for not providing notice of copyright ownership. Use of the symbol © or the word “Copyright” does not have a legal status, but when used it should be not misleading and in accordance with honest market practices.

Belgium has extensive collective rights management systems:

• for literature and music authors – SABAM or SACD;
• for journalists – SAJ-JAM;
• for the musical industry and performers – SIMIM and URADEX;
• for visual arts authors – SOFAM; and
• for film producers – Agicoa Europe Brussels, etc.

These collective rights management systems are regulated in the CEL. Collecting societies must be licensed by Ministerial Decree for acting as a collective rights management organisation. These organisations manage the exploitation rights of their members and, in this regard, establish charging, collection and distribution rules for all modes of exploitation of protected works.

Copyright protection does not require registration, and there is no copyright register. A foreign copyright registration does not, as such, prove authorship.

Copyright protection exists automatically upon the mere creation of an original work. There are no requirements or procedures to comply with for protection by copyright. However, certain enhanced modes of evidence help the authors to prove the date of creation and their authorship, eg, the i-DEPOT provided by BOIP (see their website) (registration of the name mentioned and the submission date).

Not applicable in this jurisdiction (see 3.8 Copyright Registrationand 3.9 Copyright Application Requirements).

Not applicable in this jurisdiction (see 3.8 Copyright Registration and 3.9 Copyright Application Requirements).

A work protected by copyright can also be protected by a trade mark or related rights, provided the conditions for protection are met, eg, original slogans, character names, titles of works, newspapers or magazines, and logos. Belgian law does not limit the scope of copyright laws based on trade mark or related rights, but instead allows cumulation of IP rights.

Trade mark rights are subject to registration and cannot be acquired by merely using a sign. There are no different standards for registering different types of sign (eg, no secondary meaning required to register trade dress, such as product configurations).

There is one publicly available trade mark register dedicated for the Benelux called the BOIP Trademarks Register. The EUIPO Trade Marks Register covers the whole territory of the European Union.

Before applying for registration, it is normal practice to search for existing conflicting trade marks in these publicly available registers.

The Benelux system does not allow the registration of series marks in one single application. However, case law confirms the protection of series marks, ie, several individual trade marks that resemble each other to some extent, possibly differing only as to non-distinctive elements that do not affect the character of the overall mark.

The registration term is ten years from the filing date. It can be renewed (indefinitely) for successive ten-year periods up to six months after the trade mark’s expiry date (also known as the “grace period”).

It is not possible to update or refresh a trade mark registration by modifying the trade mark itself (eg, image, spelling), adding goods and services, or converting a collective or a certification mark into an individual one or vice versa. However, it is possible to remove certain goods or services and to limit the scope of protection.

Individuals and legal entities can directly apply for a registration. The application for a Benelux trade mark should be filed in Dutch, French or English by submitting, inter alia, the applicant’s name and address, the representation of the trade mark and a list of the goods and services considered. A single application may cover multiple classes of goods and services. The application for a collective or certification mark must be accompanied by regulations governing the use of the mark.

Fees are as follows:

• basic fee for an individual trade mark– EUR244 for one class of goods and services; plus
• additional fee per class – EUR27 for the second class, EUR81 per class from the third onwards;
• basic fee for a collective or certification mark– EUR379 for one class; plus
• additional fee per class – EUR42 for the second class, EUR126 per class from the third onwards; and
• additional fees for an accelerated registration– EUR196 for one class, EUR21 for the second class and EUR63 per class from the third onwards.

Proof of use is not required before the registration of a trade mark in the Benelux region. However, genuine use of the trade mark has to occur within five years following registration in connection with the goods or services in respect of which it is registered (see also 2.4 Use in Commerce).

BOIP does not consider ex officio the existence of prior rights in its examination of an application. It will only examine prior rights when they are invoked in an opposition procedure by the holder of an earlier right.

The holder of an earlier trade mark or an earlier application for a geographical name may lodge an opposition procedure against an application on the relative grounds listed in Article 2.2ter BCIP.

Such opposition can be filed in writing at BOIP within two months following publication of the application (see 5.4 Opposition Procedure).

When certain legal requirements are not satisfied, the applicant will be informed of the conditions that are not fulfilled, with the opportunity to rectify. It is not possible to modify the sign constituting the trade mark either during the period of registration or at the time of its renewal.

The list of goods and services included in the application can be limited during the period of registration. An application may also be revoked by its owner at any time.

A trade mark registration or application may be divided in the sense that it may be transferred in respect of part of the goods or services for which it is registered.

A request for modification of entries in the register concerning a Benelux filing or registration, such as (partial) transfer, should be addressed to BOIP. It must contain the registration number, the name and address of the holder of the right, the holder’s signature, the signature of its representative, and in relevant cases, the representative’s name and address. Additionally, a copy of the deed of transfer must be produced.

Filing a request to divide a trade mark (application) is common when subject to a partial refusal for certain goods or services, or when the holder/applicant can show genuine use of the mark for certain goods or services only. This can also be considered when certain goods or services carry a higher risk of opposition or cancellation, considering third party rights.

Dividing the application/registration among the countries is not allowed.

If incorrect information is provided in a submitted application, any concerned third party has the right to raise this issue and request its rectification. If the application was submitted in bad faith, BOIP or a competent national court can declare the trade mark null and void.

The registration will be refused by BOIP on absolute grounds, including:

• non-distinctive or descriptive signs designating characteristics of the goods or services;
• generic signs which have become customary in the language or the trade;
• signs consisting exclusively of the shape of the goods themselves, or where the shape is necessary to obtain a technical result;
• signs contrary to public policy or accepted principles of morality;
• deceptive signs as to the nature, quality or geographical origin of the goods or services;
• unauthorised signs pursuant to Article 6ter of the Paris Convention; and
• signs for which the application is made in bad faith (noting, however, that BOIP cannot refuse to register a trade mark on its own initiative if the application was made in bad faith).

If BOIP objects the registration based on absolute grounds, the applicant is notified in writing of the reason of the provisional refusal. The applicant can file an objection, stating the reasons why the registration should be accepted, within a period of one month, which can be extended to a maximum period of six months. If BOIP maintains its decision in whole or in part, the applicant is notified of its final decision and of the legal remedies.

The final decision of BOIP to refuse the registration is subject to appeal by the applicant to the Benelux Court of Justice (BCJ), in order to have that decision annulled or reviewed. An appeal to the BCJ must be filed within two months from the notification of the final decision. In the proceedings before the BCJ, the applicant may be represented by a lawyer. The BCJ may refer questions of interpretation of EU law to the Court of Justice of the European Union (CJEU).

The Benelux countries participate in the Madrid system. International trade marks are registered with the World Intellectual Property Office (WIPO). An application for international registration based on a Benelux application may only be filed at BOIP. The application should be made by submitting a document containing the information required by the Madrid Agreement and Madrid Protocol. BOIP will check whether the applications meet the requirements and send them to WIPO for further processing.

An opposition before BOIP can be filed within two months from the publication of the application. A potential opponent cannot request extensions of time to file an opposition. However, once an opposition has been filed, the parties are given a two-month period to decide whether they want to resolve their differences between themselves (cooling-off period). That way, they can reach an amicable solution without BOIP’s intervention.

An opposition can be filed based on different relative grounds.

• Double identity: identical signs in relation to identical goods or services.
• Likelihood of confusion:
1. identical or similar signs;
2. in relation to identical or similar goods or services; and
3. creating a likelihood of confusion.
• Freeriding and dilution:
1. identical or similar signs;
2. the earlier trade mark has a reputation;
3. a link between the signs;
4. the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character (such as dilution) or the repute of the earlier trade mark (such as freeriding or tarnishing); and
5. there is no due cause for using the contested sign.

An opposition before BOIP can be filed by either a person or a company based on an earlier trade mark (not on an earlier trade name). A trade mark licensee can also file an opposition with the permission of the owner. Representation by an attorney is not mandatory. The basic fee for an opposition before BOIP is EUR1,045.

The following is a summary of the opposition procedure.

• Receipt of the opposition by BOIP, which will assess whether the opposition is admissible.
• Two-month cooling-off period from the notification of admissibility (see 5.1 Timeframes for Filing an Opposition).
• Commencement of proceedings.
• Exchange of arguments (in principle one round per party): the opponent has a period of two months from the beginning of the proceedings to submit their arguments and supporting documents. Upon receipt of them, the defendant will be granted a period of two months in which to respond.
• Hearing, only if BOIP deems there are grounds for a hearing.
• Decision: BOIP will either reject the opposition or hold it to be justified and therefore refuse to register the trade mark in whole or in part.

An appeal may be filed before the BCJ against a final decision of BOIP within a period of two months, taking effect from the date of the notification of the decision. Within two months of notification of the application, the defendant shall submit a statement of defence. The application and the statement of defence may be followed by a reply and rejoinder (the President of the Chamber that will decide the matter shall prescribe a period within which such pleadings are to be submitted). Proceedings before the court are in principle conducted in writing, but they may also include an oral phase if a party requests it or if the court decides it ex officio.

Trade Marks

In the Benelux region, there is no time period within which to file revocation/cancellation actions. However, where the proprietor of an earlier trade mark has acquiesced, for a period of five successive years, in the use of a later registered trade mark while being aware of such use, that proprietor shall no longer be entitled on the basis of the earlier trade mark to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith.

If revocation is claimed based on the lack of genuine use of the trade mark within a period of five years after the completion of the registration procedure, the revocation may no longer be invoked when genuine use of the trade mark has been started or resumed during the interval between the expiry of the five-year period and submission of the claim for revocation. However, the proprietor of the trade mark will not be able to invoke the commencement or resumption of the genuine use when it occurs within a period of three months before the submission of the claim for revocation and only after the proprietor becomes aware that the claim may be filed.

Copyright

There is no revocation or cancellation procedure for copyright.

Trade Mark

The reasons for revocation of a trade mark are as follows:       

• the trade mark has become the common name in the trade for a good or a service in respect of which it is registered (due either to acts or inactivity of the proprietor);
• the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of these goods and services;
• there has been no genuine use (see 2.4 Use in Commerce); or
• the trade mark can be declared invalid based on the absolute or relative grounds for refusal or invalidity listed in Articles 2.2bis and 2.2ter BCIP.

Expungement or Re-examination Procedure

BOIP’s revocation decisions can be appealed before the BCJ (see 5.5 Legal Remedies Against the Decision of the Trade Mark Office). The Belgian national court’s revocation decisions can be appealed to the competent Court of Appeal (see 13.2 Timeframes for Appealing Trial Court Decisions).

Copyright

Revocation/cancellation is not applicable to copyright (see 6.1 Timeframes for Filing Revocation/Cancellation Proceedings).

Before the Benelux National Courts

Any interested party may invoke revocation or invalidity of a trade mark based on absolute grounds, including the Public Prosecutor.

Invoking invalidity on relative grounds can be done by any interested party only if the proprietor of the earlier trade mark or the person who is entitled to exercise the rights arising from the designation of origin or geographical indication participates in the proceedings.

Before BOIP

Any natural or legal person or any group or body set up for the purpose of representing manufacturers, producers, suppliers of services, traders or consumers can lodge an application for revocation or invalidation based on absolute grounds for invalidity.

An application for invalidation or revocation based on the relative grounds for invalidity can be lodged by the proprietor or licensee of earlier trade marks, by the proprietor of a trade mark when an agent or representative of the proprietor applies for a trade mark in their own name without consent from the proprietor, and by the person authorised to exercise the rights arising from the designation of origin or geographical indication.

Copyright

This is not applicable to copyright (see 6.1 Timeframes for Filing Revocation/Cancellation Proceedings).

Trade mark revocation actions can be brought before BOIP or before the Benelux national courts. This is not applicable to copyright (see 6.1 Timeframes for Filing Revocation/Cancellation Proceedings).

Partial revocation/cancellation of trade marks is possible (article 2.30nonies (3) BCIP), in which case the trade mark will be revoked/cancelled only in relation to some goods and/or services. The declaration of invalidity or revocation will be limited to one or more specific goods or services in respect of which the trade mark is registered, if the grounds for invalidity/revocation affect only some of those goods or services.

This is not applicable to copyright (see 6.1 Timeframes for Filing Revocation/Cancellation Proceedings).

Amendment of Claim for Revocation/Cancellation of Trade Mark

In judicial proceedings before the Belgian courts, a claim may be extended or amended if the new submissions are based on facts or acts invoked in the summons, even if their legal qualification is different (Article 807 CPP).

During cancellation/revocation proceedings before BOIP, a claim can be limited but not extended.

Amendment of the Trade Mark

It is possible to revoke some of the goods or services for which the trade mark is registered (limitation of the statement of goods and services). It is also possible for the proprietor of the trade mark to revoke their registration in its entirety. However, it is not possible to modify the trade mark itself (eg, spelling, image) or to add new goods and services.

Copyright

This is not applicable to copyright (see 6.1 Timeframes for Filing Revocation/Cancellation Proceedings).

Combining revocation/cancellation actions and infringement actions based on a Benelux trade mark is only possible before civil national courts, since BOIP has no jurisdiction to decide on infringement actions. Actions before national courts involving revocation/cancellation and infringement are heard together.

This is not applicable to copyright (see 6.1 Timeframes for Filing Revocation/Cancellation Proceedings).

Trade marks registered fraudulently can be considered as bath faith registration. However, there is no particular proceeding to investigate such fraud or to suspend the application pending the results of investigations concerning the alleged fraud.

On the other hand, if an agent or representative of the proprietor of the trade mark applies for registration thereof in their own name without the proprietor’s authorisation, unless the agent or representative justifies their action, the proprietor may oppose the registration of this trade mark; or, when the trade mark has already been registered, they may claim its cancellation or demand the assignment of the trade mark in their favour (Articles 2.2ter(3)(b) and 2.20ter BCIP). 

This is not applicable to copyright (see 6.1 Timeframes for Filing Revocation/Cancellation Proceedings).

Trade Marks

An assignment must be in writing and made for the whole Benelux territory, otherwise it is considered null and void (Article 2.31.2 BCIP). It is possible to transfer a trade mark for all or part of the goods or services for which it is registered (Article 2.3.1. BCIP). A trade mark is transmissible upon death.

Copyright

An assignment is not required to be in writing to be valid, but a written assignment is needed to prove its existence against the author (Article XI.167(1) CEL). Partial assignment is also permitted by separately transferring the various exploitation rights or methods. When an author dies, the heir (or the person appointed by the author) will own the author’s exploitation rights and exercise the moral rights until 70 years thereafter (Article XI.171 CEL).

Trade Marks

A licence is not required to be in writing to be valid. It shall become opposable against third parties only after recordal within the BOIP register of an extract from the document establishing this licence or a corresponding declaration signed by the parties involved in the manner specified by the implementing regulations of the BCIP and following payment of the fees due.

A licence can be exclusive, sole or non-exclusive; it can be licensed for some or all of the goods and services for which it is registered and for the whole or part of the Benelux territory (Article 2.32 BCIP).

Copyright

For requirements, see 7.1 Assignment Requirements and Restrictions. A licence can be exclusive, sole or non-exclusive. A perpetual licence is not allowed but it can be given for the full duration of copyright, ie, until 70 years after the author’s death.

Trade Marks

It is possible to assign or to grant a licence of an application during the application process. However, registration of the licence is not possible before the registration of the Benelux trade mark.

Under Belgian law, there is no difference between assignments/licences for applications based on use and applications based on an intent to use.

Copyright

Assignment of an application is not possible: there is no application to copyright as such under Belgian law.

Trade Marks

If the licensee wants to invoke his licence against third parties, the licence must be recorded in the BOIP Trademarks Register. The same applies for the assignment (see 7.1 Assignment Requirements and Restrictions and 7.2 Licensing Requirements or Restrictions).

Copyright

There is no copyright office in Belgium. A copyright licence or assignment does not need to be registered. Opposability to third parties follows the common civil law rules.

Under Belgian law, the (exclusive) licensee or assignee must, within the framework of an exploitation agreement, exploit these exclusive rights within an agreed-upon timeframe. If the licensee or assignee fails to meet their obligation without a legitimate excuse, the author may take back their rights, in whole or in part, or terminate the exclusivity of the licence, after a formal notice which has remained without effect for a reasonable period of time (Article 167/4 CEL).

Furthermore, the copyright assignment agreement generally includes a clause allowing an author or their heirs to terminate the agreement at any time if the assignee does not fulfil all of its obligations. The parties to an agreement can also always mutually terminate the agreement.

After the author’s death, their economic rights are owned, during the copyright protection period, by the heirs or legatees, unless the author has assigned them to a specific person, and the author’s moral rights are exercised by the heirs or legatees unless they have designated a person for this purpose (Article 171 CEL).

Trade Marks

A trade mark may be given as a security, be subject to rights in rem or be levied in execution. Rights in rem and levy of execution become opposable against third parties only after registration of an extract from the document establishing the right in rem/levy of execution by BOIP or of a written statement signed by the parties attesting to its existence and after payment of the fees due.

Copyright

Copyright cannot be given as a security, be subject to rights in rem or be levied in execution in Belgium. However, tangible objects in which a protected work materialises or pecuniary rights resulting from the invocation of a copyright (ie, claims that may arise from economic rights, eg, under a licensing agreement, or the author’s right to remuneration to be collected from a collecting society, except when prohibited by a contract) can be given as a security.

A trade mark owner is no longer entitled to prohibit an infringing use of their trade mark if they have knowingly tolerated that use during five successive years and the disputed sign has not been registered in bad faith (“rule of acquiescence”: Article 2.30septies(1) BCIP).

Infringement claims are not subject to prescription as long as the infringement persists. As regards trade marks, a tolerance over a long period, if not accompanied by occurrences of confusion about the origin of the goods or services, may be an indication that there is no infringement.

Infringement claims (injunction and damages) for infringing acts ended for more than five years will be time-barred from the day following that on which the injured party became aware of the damage, or 20 years from the day following that on which the infringement occurred (Article 2262bis(1) CCP). Claims based on contracts will be time-barred after ten years (Article 2262bis(1) CCP).

Trade Marks

The owner of a registered trade mark is entitled to prevent all third parties not having their consent from using in the course of trade (Article 2.20(2) BCIP):

(a) an identical sign in relation to identical goods or services;

(b) an identical or confusingly similar sign in relation to identical or similar goods or services;

(c) an identical or similar sign, irrespective of whether it is used in relation to identical or similar goods or services, where the trade mark has a reputation in the Benelux territory and the use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark; or

(d) an identical or similar sign for purposes other than distinguishing goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the trade mark.

Grounds (c) and (d) cover claims for dilution by blurring and dilution by tarnishment. Cybersquatting qualifies as a use for purposes other than those of distinguishing goods or services and can be remedied on the basis of ground (d). Domain name grabbing could also be prohibited on the basis of Article XII.22 CEL.

An owner may also bring cease-and-desist claims against intermediaries whose services are used by a third party to infringe their right (Articles 2.22(3) and 2.22(6) BCIP and XVII.14(4) CEL).

Infringement claims may only be based on registered trade marks, with the exception of well-known marks within the meaning of Article 6bis Paris Convention.

Copyright

Holders may bring claims for direct infringement of their economic and moral rights (see 3.4 Copyright Rights). They may also bring cease-and-desist claims against intermediaries whose services are used by a third party to infringe their copyright (Article XVII.14(4) CEL). Further, any person who intentionally removes or alters electronic rights management (ERM) information without authority, or knowingly distributes, imports, broadcasts or communicates (copies of) works where ERM information has been removed or altered, is guilty of a crime (Article XI.292 CEL).

Trade Marks

A trade mark infringement claim based on likelihood of confusion requires:

• use in the course of trade (ie, not private use);
• of an identical or confusingly similar sign;
• in relation to identical or similar goods or services.

The likelihood of confusion must be appreciated globally, taking into account all relevant factors considering the circumstances of the case, including the relevant public, the degree of distinctiveness of the older trade mark and the sign, the degree of similarity between the goods and services concerned and the degree of visual, phonetical and conceptual similarity between the older trade mark and the sign.

An infringement claim based on reputation can also be invoked against non-similar goods/services and does not require a likelihood of confusion but requires that the invoked trade mark is known by a significant part of the public in a substantial part of the Benelux territory, which may consist of a part of one Benelux country, concerned by the products or services which it covers, that the attacked sign presents a link with the earlier reputed trade mark and that the use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier reputed trade mark.

These factors follow from the BCIP and the EUTMR and established case law of the CJEU and the Benelux courts.

Copyright

A copyright infringement claim requires proof that the work satisfies the conditions of originality and form, and that the alleged infringer subsequently copied (in full or in part) the original elements of the earlier work, which requires proof that they knew or had access to the earlier work.

The necessary parties in trade mark or copyright infringement actions are the right-holder and the alleged infringing party.

Without prejudice to the provisions of the licensing contract, the holder of a trade mark non-exclusive licence may only bring infringement proceedings with the trade mark owner’s consent (Article 2.32(4) BCIP). The holder of an exclusive licence may bring infringement proceedings if the trade mark owner, after formal notice, does not himself bring infringement proceedings within an appropriate period. Any licensee also has the right to join an action brought by the trade mark owner in order to obtain compensation for damages directly incurred by them or to be allocated a proportion of the profit made by the defendant (Article 2.32(5) BCIP).

It is not possible to obtain an injunction merely on the basis of a trade mark application.

Any person with a sufficient interest can initiate a copyright claim or join a copyright infringement action, including the author, the owner of the copyright, a licensee, a distributor of copyrighted works or a publisher.

The Belgian legal system does not permit representative or collective actions (such as class actions) for trade mark or copyright proceedings.

There is no prerequisite to issuing a formal demand letter, warning letters, engaging in mediation, or registration. However, if no formal demand letter or warning letters have been sent before starting a lawsuit, this may have consequences with regard to the award of legal fees and costs (Article 1017 CCP).

There are no groundless threats provisions under Belgian law, but an owner can be sanctioned when filing a lawsuit based on frivolous claims of infringement or in case of an abuse of rights (Article 780bis CCP).

Trade Marks

Benelux trade mark infringement proceedings can be brought in Belgium before the Enterprise Courts established at the seat of a court of appeal, ie, Brussels, Antwerp, Ghent, Liège and Mons, in order to obtain civil remedies. Infringement proceedings based on an EU trade mark are of the sole competence of the Brussels Enterprise Court. Criminal complaints can be introduced before any territorially competent court. Appeals are lodged before the court of appeal of the same seat.

Before the Belgian courts, the trade mark or copyright owner should be represented by an attorney admitted to the Bar. Foreign trade mark owners may bring infringement claims in Belgium, but their trade mark should be registered within the BOIP or EUIPO register.

Copyright

Infringement proceedings should be initiated before the Enterprise Court established at the seat of a court of appeal, ie, Brussels, Antwerp, Ghent, Liège and Mons, in order to obtain civil remedies if the litigation is between two enterprises (Article 575 CCP). The Court of Appeal will have jurisdiction at second instance. If one of the parties is not an enterprise, the court of first instance or justice of the peace (if the amount claimed is below EUR5,000) has jurisdiction (Article 590 CCP). If proceedings are initiated before the court of first instance, the Court of Appeal will have jurisdiction in appeal. The court of first instance will have jurisdiction in appeal if proceedings were initiated before a justice of the peace at first instance.

Foreign copyright owners may bring infringement claims in Belgium; no registration is required.

A lawsuit is typically initiated by the service of a writ of summons (statement of claims) containing the claims, all factual elements and a summary of the legal grounds (Article 702 CCP). It can be supplemented later by additional arguments and evidence (the claims may be amended as well subject to conditions: see 6.6 Amendment in Revocation/Cancellation Proceedings).

There are no special provisions for lawsuits in trade mark or copyright proceedings that differ from non-IPR proceedings with regard to the initial pleading standards. A defendant can bring a counterclaim, which will normally be examined and decided together with the main claim.

The Belgian courts can issue a declaratory judgment in trade mark and copyright cases only if the declaratory judgment proceedings are meant to safeguard a seriously threatened right (Article 18, §2 CCP). The claimant must establish that (i) their right is under a serious threat which already causes some kind of disturbance, and (ii) the declaratory judgment will clarify the situation, put an end to the threat and/or have the (non-)existence of their right recognised.

When, upon request of a trade mark or copyright owner, the court orders a preliminary injunction or other corrective measure against the alleged infringer, the latter can ask the court to make the enforcement of the order subject to lodging a guarantee (such as posting a bond) intended to ensure the compensation if the order is reversed on the merits (Articles 1039, 1369bis/3(1) and 1369ter(2) CCP).

Protective briefs filed by defendants to anticipate infringement proceedings are not as such recognised under Belgian law but are sometimes used to avoid ex parte unilateral measures (eg, descriptive counterfeit seizures).

There is no alternative avenue specifically dedicated to resolving small trade mark or copyright claims.

Trade Marks

The jurisdiction of BOIP is limited to trade mark registration cases (including trade mark opposition and cancellation actions), but does not extend to infringement actions which must be initiated before the national courts. The authority of a court decision handed down by a national court in Belgium, the Netherlands or Luxembourg shall be recognised in the two other states. The cancellation of a trade mark registration as ordered by a national court shall be carried out by BOIP (Article 1.14 BCIP).

Copyright

There is no copyright office in Belgium.

Counterfeiting a trade mark maliciously or fraudulently is a criminal offence (Article XV.103 §1 CEL). Counterfeiting copyright is a criminal offence defined as any malicious or fraudulent infringement of copyright, or any malicious or fraudulent use of the author’s name or of any distinctive sign adopted by them to designate their work (Articles XI.293 and XV.104 CEL).

Bootlegging (ie, making and distributing an unauthorised audio or video recording of a performance) is considered piracy. Deleting or modifying any electronic rights management information or distributing, importing for distribution, broadcasting, communicating to the public or making available to the public works protected by copyright can also constitute a criminal offence (Articles XI.291, XI.292 and XV.104 CEL).

Trade mark and copyright infringement proceedings are governed by the general rules in the CCP. There is no specialised intellectual property court for copyright and/or trade mark cases but the CCP grants exclusive jurisdiction to certain courts to hear these cases (see 8.7 Lawsuit Procedure). Trade mark infringement proceedings based on an EU trade mark are of the sole competence of the Brussels Enterprise Court (see 8.7 Lawsuit Procedure). Copyright and trade mark cases are determined by legal (non-technical) judges. The parties have no influence on who is the decision-maker.

Two special types of legal proceedings involving IPR are as follows.

Summary cessation proceedings (or “cease-and-desist action”) are used for obtaining injunctive relief and other measures such as a recall and destruction of the infringing goods, the publication of the judgment or a summary thereof, but no damages. These procedures are on the merits but take place within a short timeframe (like summary proceedings). The proceedings should be brought, in the case of trade marks, before a President of an Enterprise Court, or, in the case of copyright, before a President of an Enterprise Court or a court of first instance (Article XVII.14, al. 1 & 3 CEL).

Counterfeit seizure proceedings (“beslag inzake namaak” – “saisie-contrefaçon”) can be brought, on unilateral request (ex parte), before the President of an Enterprise Court or a court of first instance located at the seat of the Court of Appeal in whose jurisdiction the descriptive operations, or some of them, are to take place. The President can order one or more experts to describe all elements, objects, documents suitable for proving the alleged infringing nature of the goods, as well as their origin, destination and the extent of the infringement. Such a description can occur at the alleged infringer’s premises and everywhere else in the Belgian territory. Granting such order requires proof of a prima facie valid trade mark or copyright and “indications of infringement”. The President can also order the physical seizure of the goods if the infringement cannot reasonably be disputed and a seizure is reasonably justified after weighing the interests involved, including the public interest.

An action on the merits must be launched before a court of competent jurisdiction (in Belgium or abroad) within a term of approximately one month from reception of the expert report (unless the judge sets another term), failing which the expert report can no longer be relied upon.

With the exception of well-known trade marks within the meaning of Article 6bis of the Paris Convention, a trade mark registration is a prerequisite to bringing a trade mark infringement claim (see 4.1 Trade Mark Registration). Depending on the circumstances, it may also be possible to rely on trade name protection or unfair practices if the conditions are satisfied. Copyright protection, on the other hand, is not subject to registration.

Regarding the scope of protection of registered trade marks, see questions 8.2 Legal Claims for Infringement Lawsuits and Their Standardsand 8.3 Factors in Determining Infringement.

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A popular mechanism for obtaining relevant information or evidence are the aforementioned ex parte counterfeit seizure proceedings (see 9.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings).

Another mechanism is for a trade mark or copyright owner to file a request during inter partes infringement proceedings to disclose information on the origin and destination of the infringing goods. A court order to disclose information can be obtained in a decision on the merits together with a finding of infringement, or at any stage of the proceedings in an interim decision before a finding of infringement (Castorama, C 628/21, §43–45), as a provisional measure on the basis of Article 19.3 CCP, possibly in combination with an order to produce evidence (Article 871 CCP) and/or to disclose a specific document containing evidence of a fact relevant to the case (Article 877 CCP).

Additionally, it is possible to hear witnesses (Article 915ff CCP). The judge can order a witness hearing when suggested by one of the parties or of the judge’s own accord, but this is rather exceptional. There is no system of cross-examination.

It is not uncommon to rely on market surveys or declarations from market experts in the context of trade mark litigation, but these are always scrutinised very carefully and regularly found to be biased or lacking the necessary objectivity, transparency and/or representation. Regarding the role of expert witnesses, see also 9.3 Obtaining Information and Evidence.

Typical costs for a trade mark or copyright infringement action at first instance include bailiff costs, attorney fees, court fees and, where applicable, translation costs and technical adviser fees. The prevailing party can obtain full reimbursement of the bailiff costs and court fees (and, where applicable, translation costs and technical adviser fees), and partial reimbursement of the attorney fees (see 11.3 Attorneys’ Fees and Costs). Factors that will significantly impact the expected costs are the complexity of the case, the number of intellectual property rights invoked, the number of defendants, their resistance, the amount of evidence filed and whether a counterclaim is filed, etc.

Trade mark and copyright infringements may constitute criminal offences (see 8.12 Counterfeiting and Bootlegging). Anyone harmed by the infringement may lodge a complaint and join the public prosecution.

Defences against infringement include informative use, earlier local use of a sign, exhaustion, invalidity of the trade mark, priority, objection for non-use, bad faith, and acquiescence, which can be summarised as follows.

Informative Use

A trade mark holder cannot object to the use by a third party of:

• their name and address;
• indications relating to characteristics of the goods or services; and
• the trade mark of a third party where it is the only way to indicate the purpose of a good or service, in particular as an accessory or spare part.

The third party must act in good faith towards the trade mark holder and in accordance with honest practices. They may not use the trade mark more than necessary, nor give the impression of a commercial relationship with the holder, nor try to take unfair advantage of the reputation of the trade mark.

Earlier Local Use of a Sign

A trade mark holder cannot oppose the use of a sign which was already in use before the registration of their trade mark (eg, when a trade mark is similar to a trade name used locally prior to the registration of the trade mark). However, if the earlier user extends their use territorially, the holder may still object to that extended use.

Trade Mark Exhaustion

See 10.5 Exhaustion.

Invalidity of the Trade Mark

A defendant can, by way of counterclaim, invoke the invalidity of the trade mark based on absolute grounds (Article 2.2bis BCIP) or relative grounds (Article 2.2ter BCIP) (see 6.3 Ability to File a Revocation/Cancellation Proceeding).

Third-Party Use

A trade mark holder cannot prohibit a third party’s use of their trade mark with due cause (Article 2.20(1)(c) and (d) BCIP). Due cause includes bona fide use in good faith, freedom of the press, freedom of expression and other fundamental rights (eg, freedom of information).

Bad Faith

A trade mark can be declared invalid where the application for registration was made in bad faith.

Licence

If a holder has granted the defendant a right to use his trade mark for all or part of the goods or services, this licence can be invoked as a defence against infringement allegations provided the use is still within the licence terms.

Non-use as a Defence

If a trade mark is registered for more than five years and has not been genuinely used during the five-year period preceding the date of bringing the action, the defendant can request the trade mark holder to provide proof of genuine use of the trade mark, failing which the infringement claim will be dismissed. The defendant can also seek the revocation of the trade mark for lack of use by way of a counterclaim.

Invalidity of the Trade Mark for Misleading Use

When a trade mark is used in a way that might mislead the public as to, inter alia, the nature, quality or geographical origin of the goods or services, it may be declared invalid.

Invalidity of the Trade Mark for Transformation Into a Generic Term

When a trade mark is used in the course of trade as a generic name to designate certain goods or services (eg, aspirin), it can no longer fulfil its original function and may be declared invalid. The transformation of a trade mark into a generic term must be due to the activity or inactivity of the holder themself. This may be the case, for example, if the holder does not take action against third parties who use the trade mark as a generic name.

Surrender

A holder may surrender his registration at any time and waive his exclusive rights over the sign, which will result in the infringement claim being dismissed.

Loss of Rights due to Acquiescence

See 6.1 Timeframes for Filing Revocation/Cancellation Proceedings.

There is no general fair use exception under Belgian trade mark or copyright law. Belgian copyright law provides for a long but closed list of exceptions, such as the parody exception whereby the author may not prohibit the caricature, parody or pastiche of their work, taking into account honest practices (Article XI.190, 9° CEL). In line with the CJEU’s decision in the Deckmyn case, the parody exception applies to all types of works and can only be invoked if two cumulative conditions are met:

• the parody evokes an existing work, while being noticeably different from it (it must present perceptible differences to the protected work); and
• the parody constitutes an expression of humour or mockery.

Although the legislator did not choose to include the exercise of the fundamental rights to free speech or information as an express limitation to exclusive trade mark rights or copyright, those rights must still be considered when assessing infringement. This is also the case for trade marks, where the BCJ held in the Damn Perignon case that use of a trade mark other than for distinguishing goods or services is allowable, where the artistic expression is the original result of a creative design process which does not aim to harm the trade mark or its holder.

Copies for private purposes can be made without the author’s authorisation (Article XI.190, 9° CEL), subject to the following conditions:

• only copies made by a natural person for private use;
• the copy cannot be made or used for direct or indirect commercial purposes;
• making a private copy from an illegal source is not allowed (ie, a source that infringes the rights of the author); and
• authors are entitled to a remuneration to compensate for this exception.

Under certain circumstances, intermediary service providers can benefit from an exception to trade mark or copyright infringements (Articles XII.17–XII.19 CEL, which transpose Articles 12–14 of the e-Commerce Directive 2000/31).

“Mere conduit” providers are not liable for the content they convey, as long as they do not initiate the transmission, nor select the receiver or select or modify the information contained in the transmission, and act expeditiously to remove or to disable access to the information.

“Caching” providers are also not liable for the automatic, intermediate and temporary storage of information they implement to make information transmission more efficient. They must not modify the information or interfere with the lawful use of technology, and must comply with access conditions and rules, and act expeditiously to remove or to disable access to information that has been removed from the network at the initial source of the transmission.

“Hosting” providers are also not liable if they act expeditiously to remove or to disable access to unlawful content upon obtaining actual knowledge of illegal activity or information.

Articles 12 to 15 of the e-Commerce Directive have been repealed and the exceptions to the liability of intermediary service providers are now governed by Articles 4, 5, 6 and 8 of the Digital Services Act (DSA) (EU Regulation EU 2022/2065). (See also 14.4 Trade Mark and Copyright Use in Business.)

Trade mark rights are exhausted once a product has been put on the market for the first time in the European Economic Area (EEA) by the owner or with their consent, unless there are legitimate reasons to oppose further commercialisation of the goods: for instance, where the condition of the goods is changed or impaired after the goods have been put on the market (Article 2.23 BCIP), which may include repackaging, rebranding and debranding of products in accordance with the case law of the CJEU.

The first sale or other transfer of ownership of the original or a copy of a work in the EU by the author or with their consent exhausts the right of distribution of that original or copy in the EU. The theory of exhaustion applies only to the right of distribution, not to the right of communication to the public (which cannot be exhausted). 

There is no digital exhaustion of copyright and exhaustion does not apply to services. In other words, exhaustion of copyright applies to physical (tangible) objects only, and not to non-tangible, intangible objects (no exhaustion for digital copies). This is particularly relevant for digital content, eg, the author of a book cannot object to the distribution of a paper (physical) copy of their work if they have given their consent (and if the other conditions are met), but they can object to the further marketing of the corresponding e-book (intangible) (C‑263/18, Tom Kabinet). However, there is digital exhaustion of distribution rights with regards to copyright in computer software (C‑128/11, UsedSoft).

Where a work has been lawfully disclosed (first condition), the author may not prohibit reproduction, in any form or on any medium whatsoever, justified by the aim of preserving the cultural and scientific heritage (second condition) by libraries, archives or museums accessible to the public (third condition) (Article XI.190, 12° CEL). The materials produced remain the property of these institutions, which are prohibited from any commercial or profit-making use. However, the author may have access to them, in strict compliance with the preservation of the work and in return for fair remuneration.

Moreover, the author may not oppose the communication, for the purposes of research or private study, of works which are not offered for sale or subject to licensing conditions, and which form part of the collections of public libraries, educational and scientific establishments, museums or archives which are not seeking any direct or indirect commercial or economic advantage, by means of special terminals accessible in these establishments (Article XI.190, 13° CEL).

Provided that the claimant establishes the urgency and the obvious nature of the infringement, the Presidents of the Enterprise Courts can grant preliminary injunctions in summary proceedings after weighing the interests of the parties and the public (Article 584 CCP) or interim measures in proceedings on the merits (Article 19.3 CCP), in order to prevent imminent infringement or forbid the continuation of the infringement, subject to penalty payments.

It is also possible to file an ex parte claim to obtain descriptive measures and, in the case of a risk of very severe harm, the physical seizure of the infringing goods and the materials used to manufacture them.

Prohibitory injunctions are available in proceedings on the merits. A specific “fast- track” (“cessation”) action allows the President of the Enterprise Court to grant a final injunction on the merits.

In case of infringement, the court deciding the case on the merits can grant the following remedies:

• cease-and-desist order (prohibitory injunctive relief);
• damages and, in relevant cases, surrender of the profits made in bad faith;
• recall and destruction of the infringing goods;
• delivery of the materials and tools used to manufacture the infringing goods;
• publication of the decision or a summary thereof; and
• provision of all information concerning the origin and the channels of distribution of the infringing goods.

Belgian law does not require the posting of a bond to obtain an injunction but the court can order that a bond be provided to enforce it. In addition, provisional enforcement of a judgment is at the risk of the enforcer, who may be liable for damages if the judgment is reversed on appeal.

Once the infringement has been established by the court, owners can claim compensation for actual damages suffered, including lost profits and moral damages. Alternatively, they can claim an account of profits made by the infringer in case of bad faith (ie, wilful infringement). Punitive damages are not allowed under Belgian law, but certain case law accepts the award of double damages in specific cases, mostly in relation to the use of unlicensed software (ie, 200% of the amount of unpaid royalties), provided this corresponds to actual damages proven.

The court which sets the damages shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused. As an alternative, it may in appropriate cases set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the trade mark or copyright. It may also order the transfer of ownership of infringing goods, as well as, in appropriate cases, the materials and tools used to manufacture those goods.

A trade mark owner may institute proceedings for compensation or transfer of profits in the name of the licensee, without prejudice to the licensee’s rights. They may also require reasonable compensation from a party which has carried out infringing acts during the period between the publication date of the filing and the registration date of the trade mark.

The remedies and amount of damages are determined at the court’s discretion. There are various calculation methods, but damages in infringement cases are typically calculated by multiplying the number of infringing items by the trade mark or copyright owner’s lost profit margin. In copyright infringement cases, courts will sometimes determine the amount of damages by way of a lump sum with reference to the tariffs applied by collective management organisations. There are no statutory damages under Belgian law.

Legal costs associated with court proceedings (see 9.5 Costs of Litigating Infringement Actions) can be claimed from the party losing the proceedings. The reimbursement of attorney fees is capped for each instance, based on the value of the claim and other factors such as the complexity of the case, any contractually stipulated fees for the prevailing party and/or the manifest unreasonable nature of the situation. Additional costs such as those arising from a counterfeit seizure may be recovered as well. If the main claim of the plaintiff and the counterclaim of the defendant are dismissed, then the court will normally hold that each party must bear their own costs.

A trade mark or copyright owner can seek relief before the President of the competent court without notice to the defendant in the context of ex parte summary proceedings in cases of extreme urgency or where the defendant’s identity is unknown, or when applying for measures for preserving evidence in the context of a counterfeit seizure, sometimes in combination with the physical seizure of allegedly infringing goods.

Belgian customs authorities are entitled to halt imports of infringing goods, either ex officio or on the basis of a national or EU application for action by the trade mark or copyright owner (EU Regulation 608/2013 and Article 2.20, §4, BCIP). In both cases, customs can suspend the release of imported goods and notify the trade mark or copyright owner. Within a period of ten days (renewable once), the owner (or the declarant) must verify and confirm the infringement in writing and request the destruction of the goods and the alleged infringer has the possibility to object, failing which the goods will be destroyed. If the alleged infringer objects to the destruction of the goods, the owner must initiate legal proceedings to determine the infringement.

Infringements resulting from so-called illegal parallel trade and overruns are excluded from the scope of EU Regulation 608/2013.

In an opposition before BOIP, the parties are given a two-month period after an opposition has been filed to resolve their differences (cooling-off period: see 5.1 Timeframes for Filing an Opposition).

Before Belgian courts, the CCP offers various mechanisms:

• mediation (Articles 1723/1 to 1737 CCP);
• arbitration (Articles 1676 to 1723 CCP); and
• conciliation (Articles 731 and 730/1 CCP) (see also 8.6 Prerequisites and Restrictions to Filing a Lawsuit).

There is no specific alternative dispute resolution scheme for infringement actions in Belgium, apart from the mechanisms described in 12.1 Options for Settlement. WIPO and EUIPO offer arbitration, mediation and conciliation proceedings specifically for intellectual property disputes.

Opposition proceedings or cancellation proceedings before BOIP based on the relative ground of double identity, likelihood of confusion, or freeriding and dilution are suspended if a cancellation action has been filed against the earlier trade mark (Articles 2.16(2)(a)(iii) and 2.30ter(2)(a)(iii) BCIP).

The EU trade mark court in Brussels hearing an infringement action or a counterclaim for revocation or invalidity of an EU trade mark shall, unless there are special grounds for continuing the procedure, on its own motion or at the request of a party, stay the proceedings when another EU trade mark court is already examining the validity of the trade mark or when an application for revocation or invalidity has already been filed at the EUIPO (Article 132(1) EUTMR). When the validity of an EU trade mark is already in issue before an EU trade mark court in another EU member state, EUIPO shall, on its own motion or at the request of a party, stay the cancellation proceedings unless there are special grounds for continuing the procedure (Article 132(2) EUTMR).

Decisions on infringement pronounced in first instance can generally be appealed to the Court of appeal (Article 1051 CCP). An appeal is typically lodged by filing a petition with the registry of the appellate court (Article 1056 CCP). The appeal document must necessarily include relevant data about the parties, the first instance decision and the grievances against it (Article 1057 CCP).

In principle, an appeal must be lodged within one month (which must be extended in the case of a foreign company) from the date of service of the decision (Article 1051 CCP). An appeal to the Supreme Court (“Cour de Cassation”/“Hof van Cassatie”) must be lodged within three months from the date of service of the appeal decision (Article 1073 CCP). Depending on the type of decision being appealed (eg, provisional, interim, seizure, on the merits), an appeal can take from several months to several years.

There are no specific provisions concerning the appellate procedure for trade mark or copyright proceedings under Belgian law.

An appeal before the Court of Appeal implies a full review of the facts of the case within the boundaries of the main appeal and cross-appeal (if any). An appeal before the Supreme Court is limited to a legal review.

A person’s name can be registered as a trade mark if it satisfies the conditions for registration. The trade mark owner may be entitled to oppose the registration of an identical or confusingly similar name, but will not be entitled to prohibit someone else from using their identical or confusingly similar name in the course of trade, provided it is used in accordance with fair practices (Article 2.23 BCIP) (see also GCEU 26 July 2023, T-439/22, §65–70).

Under copyright law, the author or owner of a portrait or any other person who owns or possesses a portrait does not have the right to reproduce or communicate it to the public without the consent of the person portrayed or, for 20 years after their death, without the consent of his assigns (Article XI.174 CEL).

Unfair competition and consumer protection rules also play a role with regard to trade mark infringement. They prohibit misleading and aggressive commercial practices towards consumers or B2C (Articles VI.92–VI.103 CEL) and among businesses or B2B (Articles VI.103/1–VI.109 CEL). For instance, any marketing of a product, including by comparative advertising, creating confusion with another trade mark or distinctive sign of a competitor is considered misleading and is therefore a prohibited unfair practice (Articles VI.94, VI.98, 1°, and VI.105, 8° CEL).

After the transposition of the DSM Directive (EU Directive 2019/790), a number of constitutional challenges were filed before the Belgian Constitutional Court against the Belgian law transposing the DSM Directive. Streaming service providers like Spotify and Sony Music are challenging the new remuneration right in Article XI.228/11 (ie, the non-waivable right to obtain remuneration from streaming for authors and performers), while large platforms (eg, Meta, Google) are challenging provisions on the new press publisher’s right. These proceedings are still ongoing, with a possible reference for a preliminary ruling by the CJEU.

The emergence of artificial intelligence is another hot topic, but to the writers’ knowledge there has been no decision yet in Belgium dealing with trade mark or copyright protection, ownership or infringement in respect of AI-generated works.

Under Belgian law, there is a regime of exemption from liability applicable to information society providers (see 10.4 Intermediaries). Online service providers have an obligation under EU law to block access to infringing content, if necessary, by means of an injunction if they fail to do so on their own initiative (L’Oréal v eBay, C-324/09, §141), and to facilitate the identification of third-party sellers using their services (L’Oréal v eBay, C-324/09, §142). Hosting providers are obliged to remove infringing content they host if so notified, for not losing the benefit of the Safe Harbour protection of Article 14 of the e-Commerce Directive 2000/31.

The new DSA Regulation 2022/2065 amends the previous e-Commerce Directive which was transposed into Belgian law under Article XII.19 CEL. Article 6 DSA became applicable on 17 February 2024 and includes an important change with regard to the liability online platform. Where an online platform presents an item of information or otherwise enables the specific transaction at issue in a way that would lead an average consumer to believe that the information, or the product or service that is the object of the transaction, is provided either by the online platform itself or by a recipient of the service who is acting under its authority or control, the online platform will not be able to enjoy the exemption from liability explained above (Article 6(3) DSA).

There are no special rules or norms regarding trade marks or copyright as used in business.