Trade Marks & Copyright 2024 Comparisons

There are no laws governing trade marks in Luxembourg, as there are no Luxembourg trade marks. Luxembourg is part of the amended Benelux Convention on Intellectual Property (Trademarks and Designs) of 25 February 2005 (“Benelux Convention”), which establishes a regional trade mark for Luxembourg, Belgium and the Netherlands. Only registered trade marks are recognised in Luxembourg, except for trade marks that are well known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property (“Paris Convention”) – namely non-registered trade marks that are renowned in the Benelux territory (“well-known trade marks”).

Authors’ rights are governed in Luxembourg by the amended Law of 18 April 2001 on authors’ rights, related rights and databases (the “Authors’ Rights Law”). The law of 22 May 2009 transposed Directive 2004/48/EC on the enforcement of intellectual property rights into Luxembourg law, and concerns both trade marks and authors’ rights (among other intellectual property rights). The law of 25 April 2018 transposed Directive 2014/26/EU on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market into Luxembourg law.

Luxembourg is a member of several conventions and treaties, including:

• the Berne Convention for the Protection of Literary and Artistic Works;
• the WIPO Copyright Treaty;
• the Benelux Convention;
• the Paris Convention;
• the Trademark Law Treaty;
• the Singapore Treaty on the Law of Trademarks;
• the Madrid Agreement Concerning the International Registration of Marks;
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Classification”); and
• the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.

Luxembourg is also a member of the World Trade Organization and has therefore been a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights since 1995.

Only Benelux, EU or international trade marks designating Luxembourg are protected in Luxembourg. However, owners of foreign trade marks may benefit in the Benelux from a right of priority (ie, the possibility to rely on an earlier date of filing in a country when applying for a trade mark in another country) provided for by the Paris Convention.

As a matter of principle, all foreign authors enjoy the rights guaranteed by the Authors’ Rights Law in Luxembourg. There are some specific provisions regarding the protection period and the artist’s resale rights.

Benelux trade marks can be:

• trade marks designating goods or services, filed by natural or legal persons;
• collective trade marks – ie, trade marks filed by public entities or by associations that have the capacity in their own name to have rights and obligations, to make contracts or accomplish other legal acts, and to sue and be sued); or
• certification trade marks – ie, trade marks capable of distinguishing goods or services that are certified by the owner in respect of material, the mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services that are not so certified.

A trade mark may consist of any signs, in particular words (including personal names) or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of being represented on the register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its owner.

It is not currently possible to apply for an olfactory or taste trade mark.

The distinctive symbols or insignia consisting of the five interlaced Olympic rings and the Olympic motto “citius, altius, fortius” are protected by grand ducal regulation in Luxembourg, as are the emblems of the Luxembourg Olympic and Sports Committee approved by the International Olympic Committee. The unauthorised use of the coat of arms of the Grand Ducal House, those of the State and of the communes, the national flag, the waterway and aviation pavilion and the national anthem, as well as all badges, emblems and symbols used by the authorities and by public entities, is also criminally sanctioned.

Luxembourg protects famous trade marks (ie, trade marks that are registered but not for the goods and services for which protection is sought) or well-known trade marks to the extent they have a reputation in Luxembourg.

Any sign can qualify for trade mark protection if it is capable of:

• distinguishing the goods or services of one undertaking from those of other undertakings (distinctiveness); and
• being represented on the register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the owner.

Grounds for the refusal of an application or the invalidity of a registration may include:

• signs that cannot constitute a trade mark;
• trade marks that are devoid of distinctive character;
• trade marks that are contrary to public policy or morality;
• trade marks that are liable to mislead the public (eg, as to the nature, quality or geographical origin of the product or service); and
• trade marks that are identical or similar to an earlier trade mark.

The distinctive character of a sign is a relative concept that must be assessed on a case-by-case basis, in relation to the goods and services for which the trade mark is applied for.

If a sign does not, in itself, have distinctive character, it may acquire it through use. Acquired distinctive character means that, as a consequence of its use, the sign is now perceived by the relevant section of the public as being a trade mark that distinguishes the goods or services of the applicant. As indicated on the website of the Benelux Office for Intellectual Property (BOIP), supporting documents may concern the sign's market share or the intensive, geographically widespread and long-standing nature of the use of the sign, statements from trade and professional associations or opinion polls.

Finally, the exclusive rights granted to the owner of a Benelux trade mark are subject to the registration of the trade mark (except for well-known trade marks).

A trade mark owner is granted exclusive rights, and is entitled to prevent any third party from using a sign in the course of trade without their consent when:

• the sign is identical to the earlier trade mark and the goods or services at stake are also identical; or
• the sign is identical or similar to the earlier trade mark, the goods or services at stake are identical or similar and there is a likelihood of confusion on the part of the public between the sign and the earlier trade mark.

The owner of a Benelux trade mark that has a reputation in the Benelux territory is also entitled to prohibit the use of a sign which, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark (regardless of whether or not the sign is used in relation to goods or services that are identical or similar to those for which the earlier trade mark is registered).

Even if the sign is not used as an indicator of the origin of goods or services, the owner of an earlier Benelux trade mark can prohibit the use of the sign in the course of trade, without due cause, that would take unfair advantage of or be detrimental to the distinctive character or the reputation of the earlier trade mark.

Under the Benelux Convention, five years after the date on which a trade mark is registered, the trade mark owner can be requested to demonstrate that the trade mark has been put to genuine use in the Benelux territory for the goods or services for which it is registered. Use of the trade mark by a licensee is of course considered as use of a trade mark. Use of a trade mark in a form that differs in elements that do not alter its distinctive character from the form in which it was registered is also considered as genuine use of the trade mark.

Supporting documentation includes invoices, screen prints of website or advertising brochures showing the trade mark.

Most of the time it is necessary to establish that the defendant has used the sign as a trade mark (but see also 2.3 Trade Mark Rights). A trade mark owner may also prohibit the use of a subsequent sign as a trade or company name if such use infringes its exclusive rights (see 2.3 Trade Mark Rights).

Under the Benelux Convention, there is no requirement to use a symbol denoting that a trade mark is registered. The use of a symbol like ® does not provide any protection and has no legal value in Luxembourg.

A trade mark can also be protected by copyright or related rights – eg, in the case of logos. The corresponding legislation will apply independently.

A trade mark owner cannot prohibit the use by an individual of his/her name in the course of trade if such use is made in accordance with honest practices in industrial or commercial matters.

Pursuant to the Authors’ Rights Law, “authors’ rights protect original literary and artistic works, whatever their type, form or expression, including photographs, databases and computer programs”. To mention just a few examples, musical works, choreography and architectural works may therefore be protected under authors’ rights. Industrial designs are also entitled to authors’ rights protection to the extent they are original. The protection will be automatic (as for all original works).

A work must be original and must be fixed in a tangible medium (which can be digital or dematerialised) in order to qualify for authors’ rights protection. The originality criterion is not defined by the Authors’ Rights Law, but is defined by case law. A work is original when it bears the imprint of its author's personality and goes beyond technical know-how. This is a subjective notion, different from novelty, and is assessed by the courts on a case-by-case basis. The originality of a work must not be confused with its artistic value, which should be irrelevant.

Pursuant to the Authors’ Rights Law, authorship belongs to the person or persons under whose name the work is disclosed, in the absence of proof to the contrary.

The Authors’ Rights Law provides that where a computer program is created by an employee in the performance of their duties or on the instructions of their employer, the employer alone shall be entitled to exercise all economic rights in the computer program so created. Parties may provide otherwise by contract.

The Luxembourg courts have not yet given a ruling (at least published) on the question of whether someone may claim authorship of a work that was not created by a human (eg, works created by artificial intelligence software or an animal).

Anonymous and Pseudonymous Authors

Authors may claim authors’ rights protection anonymously or pseudonymously. In such cases, the publisher of the anonymous or pseudonymous work is deemed to represent the author with regard to third parties.

The term of protection is shorter for anonymous and pseudonymous works – ie, 70 years from the day on which the work is lawfully made available to the public. This term runs for each element separately if the work is published in volumes, parts, issues or episodes. The term of protection starts on January 1st following the operative event.

If the identity of the author of the anonymous or pseudonymous work is established, the author or their successors in title may claim protection for the full term – ie, the author’s life and 70 years after the author's death (for the benefit of the author’s heirs or successors in title).

Joint Authorship

Joint authorship may arise in the context of collaboration projects to which several authors contribute. There is no specific requirement for joint authorship of an original work, except that individual contributions of two or more authors can be traced within a joint work.

The rights of joint authors over a joint work must be organised by contract. In the absence of a contract, joint authors cannot exert their rights over the joint work, except in the following cases provided for by the Authors’ Rights Law:

• where the contribution of the joint authors to a joint work may be individualised, each of the joint authors may exploit their personal contribution separately, unless otherwise agreed, provided that such exploitation is not carried out in conjunction with that of another joint author and is not prejudicial to the joint work; and
• each of the joint authors remains free to sue in their own name and without the intervention of the others, for any authors’ rights infringement of the joint work and to claim damages for their share, provided that the other joint authors are implicated in the judicial proceedings.

There is no statutory rule to determine ownership percentage for works created by joint authors. Joint authors must find an agreement if they consider that their individual contributions are not equal.

Directed Works

Joint works should not be confused with “directed works”, as defined under the Authors’ Rights Law as a “work created by several authors on the initiative and under the direction of a natural or legal person who publishes or produces it and discloses it under his/her/its name, and in which the contribution of the authors participating in its development is designed to be integrated into the whole”.

Authors’ rights over a directed work are not joint (as for joint works). The Authors’ Rights Law provides that, unless otherwise specified in the contract, the natural or legal person under whose name the directed work has been disclosed is vested with the original economic and moral authors’ rights over the directed work.

Directed works are frequently referred to as collective works.

Under the Authors’ Rights Law, the holders of authors’ rights are granted a variety of exclusive economic rights over their original works, as follows:

• reproduction right (including adaptation right, translation right and the right to integrate and extract one’s work in or from a database);
• public communication right (including making works available in an on-demand format);
• public distribution right;
• rental right; and
• lending right.

The authors of works of graphic or plastic art (such as paintings, drawings, engravings, lithographs, sculptures or photographs) also have an inalienable and unwaivable resale right. This means they have a right to benefit to a certain extent from the proceeds of any resale of their work when a professional of the art market is involved as seller, buyer or intermediary in the resale. This resale right is subject to the various conditions laid down in the Authors’ Rights Law and a grand ducal regulation.

Synchronisation rights do not exist under this name in Luxembourg. However, the right to use an original piece of music alongside visual or audiovisual materials is subject to the prior authorisation of the holder of the authors’ rights over the piece of music and the visual or audiovisual materials concerned.

Under the Authors’ Rights Law, the holders of authors’ rights are also granted exclusive moral rights over their original works, as follows:

• the right to disclose their works;
• the right to claim (or not to claim) authorship of their works; and
• the right to object to any distortion, mutilation or other modification thereof, or to any other infringement of their works, that would be prejudicial to their honour or reputation.

In principle, authors’ rights are protected during the author’s life and for 70 years after the author's death (for the benefit of the author’s heirs or successors in title). The term of protection starts on January 1st following the operative event.

The Authors’ Rights Law provides for a number of adjustments for certain works. For example, where the work is the product of collaboration such that the contributions of the authors are inseparable, authors’ rights exist for the benefit of all successors in title for 70 years after the death of the last surviving author.

The protection of a musical composition containing lyrics ends 70 years after the death of the author of the lyrics or the composer of the musical composition, whoever is the last to survive, provided that their contributions were created especially for the musical composition containing lyrics concerned.

The protection of an audiovisual work ends 70 years after the death of the last of the following persons to survive: the principal director or the authors of the screenplay, the dialogue and the musical compositions, with or without lyrics, especially created for use in the work.

In Luxembourg, economic and moral rights are limited in time. All rights over any original work are eligible for termination.

In Luxembourg, a special notice of authors’ rights ownership is not required for an original work to be protected. The copyright symbol © may be used to draw the attention of the public to the existing authors’ rights protection over a particular work but such use is made on a voluntary basis.

In 2018, Luxembourg transposed Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market into national law.

Four collective management organisations are authorised in Luxembourg.

• SACEM Luxembourg (Société Des Auteurs, Compositeurs et Éditeurs de Musique Luxembourg/Luxembourg Society of Authors, Composers and Music Publishers) represents and defends the rights of authors and creators of musical works in connection with authors' rights relating to public performance, public representation or reproduction. Its missions include the collection of royalties (from broadcasters, organisers of shows and major phonogram and videogram producers) arising from the exercise of these rights in order to redistribute them to the rights holders, cultural promotion and raising awareness about the respect for authors' rights.

• LUXORR (Luxembourg Organization For Reproduction Rights) manages copyrights on behalf of its author and publisher members in relation to protected textual and pictoral works, such as reproduction rights and public lending rights. Its missions include in particular the collection of royalties and rights generated by works, the redistribution thereof to the rights holders, the granting of licences to users who request them (provided that the association has received the mandate to do so), cultural promotion and raising awareness about respect for authors' rights.

• ALGOA (Association Luxembourgeoise de Gestion des Œuvres Audiovisuelles/Luxembourg Association for the Management of Audiovisual Works) tracks and distributes royalties essentially on the retransmission of the products of independent producers represented by AGICOA in Luxembourg.

• AGICOA EUROPE (Association pour la gestion collective des œuvres audiovisuelles en Europe/Association for the Collective Management of Audiovisual Works in Europe) negotiates, collects and distributes royalties from the use of audiovisual works (via cable, satellite, mobile or any other similar means) and assists with the resolution of conflicts with other rights holders.

The collective management organisations may also have the power to:

• negotiate licences;
• represent rights holders; and
• defend the interests of their members, including in court (under certain conditions).

In Luxembourg, authors’ rights protection is automatic as long as the work created is original. Authors’ rights protection is not subject to registration, so there is no authors’ rights register in Luxembourg.       

This is not applicable in Luxembourg.

This is not applicable in Luxembourg.

This is not applicable in Luxembourg.

A work protected by authors’ rights (such as a logo) may also be protected by trade mark or drawing/design, provided that the respective conditions for protection are met.

Pursuant to the Benelux Convention, the exclusive rights granted to the owner of a Benelux trade mark are subject to registration of the trade mark (except for well-known trade marks).

A trade mark register listing Benelux trade marks registered with the BOIP, EU trade marks and international trade mark applications designating the Benelux is publicly available via the BOIP website.

It is recommended (but not mandatory) to search the BOIP register for prior Benelux trade marks before applying to register a trade mark.

The Benelux Convention does not allow for the registration of series marks.

Registration of a Benelux trade mark lasts for ten years (as of the date of filing), and may be renewed for further periods of ten years (indefinitely if not cancelled or revoked in the meantime).

Renewal will take place upon the payment of the renewal fees, which should be paid within the six months immediately preceding the expiry of the registration or of the subsequent renewal thereof. Failing that, the fees can be paid within a further six months immediately following the expiry of the registration or of the subsequent renewal thereof, if an additional fee is paid simultaneously. The payment of the fees is the only step required to renew a trade mark (no proof of usage is required). Failing to pay these fees within the time allowed would result in the expiry of the trade mark and lapse of the right.

At the time of renewal, where the fees are paid in respect of only some of the goods or services for which the trade mark is registered, registration shall be renewed for those goods or services only. Apart from that, the trade mark may not be modified during the period of registration nor at the time of its renewal.

An application for the registration of a Benelux trade mark should contain the following in particular:

• the applicant’s name and address (and its legal form if it is a legal entity);
• where applicable, the representative’s name and address, or the correspondence address in the EEA;
• the trade mark (graphic representation or any relevant file, such as mp3);
• a list of the goods and services for which trade mark protection is sought, including the numbers of the classes in which these goods and services are grouped in conformity with the Nice Classification (multi-class trade mark applications are allowed);
• a specification of the trade mark describing whether it is a word trade mark, a figurative trade mark, a complex trade mark, a three-dimensional (form) trade mark or another type of trade mark;
• where applicable, the colour codes of the trade mark; and
• the signature of the applicant or their representative.

The fees for registering an individual Benelux trade mark in one class start from EUR244. The second class costs EUR27 and the addition of other classes costs EUR81 per class. The fees are higher for collective or certification trade marks. Accelerated registration is possible, subject to the payment of a supplement.

Trade marks can be registered by individuals or legal entities. Collective trade marks can be registered in the name of a trade body or association.

When a representative is appointed, its place of residence or registered office should be located in the EEA. Any party that does not have a place of residence or registered office in the EEA and has not appointed a representative must provide a correspondence address in the EEA.

The Benelux Convention does not require the use of a trade mark prior to its registration.

Prior rights are not considered by the BOIP when examining trade mark applications. The BOIP only takes absolute grounds for refusal into consideration, such as if a trade mark is devoid of any distinctive character or contrary to public policy.

Third party earlier rights are taken into consideration during the registration procedure at the stage of the opposition period.

Indeed, once the trade mark application is published in the trade marks register held by the BOIP, third parties have two months within which they may oppose the registration of the trade mark application relying on an earlier right. Several pieces of information must be given by the opponent at the time of the opposition (identity of the opponent, identification of the trade mark application and the goods or services against which an opposition is lodged, the earlier right invoked, language preference, etc).

If the opposition is found admissible by the BOIP, the procedure will commence two months after the notification of admissibility, subject to the full payment of the opposition fees. During this time period (the “cooling-off period”), at the request of both parties, the opposition procedure may be suspended if the parties want to negotiate a settlement agreement. The opponent then has two months from the notification of commencement of the procedure to provide arguments and supporting documents substantiating the opposition. In the absence thereof, examination of the opposition will be abandoned. The applicant will also have two months to respond in writing and to request proof of use of the earlier trade mark, where applicable.

After the various exchanges of arguments between the parties, the BOIP will decide either that the opposition is justified or partially justified, or that it is rejected.

An opposition can be based on the following prior rights:

• an earlier registered trade mark (Benelux trade mark, EU trade mark or international trade mark designating either the Benelux or the EU) – in some cases, the licensee of the owner can introduce the opposition procedure;
• a well-known trade mark; or
• a protected designation of origin (PDO) or protected geographical indication (PGI).

If the filing requirements are not all met, the BOIP must inform the applicant in writing; the applicant then has the opportunity to rectify the application.

It is not possible to amend the trade mark after publication of the trade mark application, except for information such as the address or name of the applicant or the list of goods and services, which can be limited (and not extended). Otherwise, a new application must be filed.

It is not possible to divide a Benelux trade mark application as such. However the owner of a Benelux trade mark may limit the list of goods or services of the trade mark or assign the trade mark for only some of the goods and services for which it is registered. See also 7.1 Assignment Requirements and Restrictions.

Please see 4.9 Revocation, Change, Amendment or Correction of an Application.

Absolute grounds for the refusal of a registration by the BOIP relate to:

• signs that cannot constitute a trade mark;
• trade marks that are devoid of any distinctive character;
• trade marks that consist exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;
• trade marks that consist exclusively of signs or indications that have become customary in the language;
• signs that consist exclusively of a characteristic that results from the nature of the goods themselves or that is necessary to obtain a technical result, or that gives substantial value to the goods;
• trade marks that are contrary to public policy or to accepted principles of morality; and
• deceiving trade marks.

If the examiner finds absolute grounds to refuse the registration, the applicant is notified by the BOIP – in writing and without delay – of the intention to wholly or partially refuse the registration, and is informed of the grounds for refusal. The applicant is then allowed to respond to such notification, stating all the facts and arguments and providing supporting documentation proving that the trade mark application should be registered.

When the BOIP refuses to register a trade mark, such decision can be appealed before the Benelux Court of Justice within two months from the notification of the final decision. The appeal is possible even if the applicant has not previously submitted an objection against the provisional refusal decision.

Luxembourg (along with Belgium and the Netherlands) is a party to the Madrid system. The filing of international trade marks shall therefore take place in accordance with the provisions of the Madrid Agreement and the Madrid Protocol.

An application for international registration based on a Benelux application may only be filed at the BOIP, located in The Hague.

An opposition against the registration of a Benelux trade mark application must be filed before the BOIP within two months from the publication of the trade mark application. A potential opponent cannot request extensions of time to file an opposition.

The applicant and the opposing party may suspend the opposition proceedings to reach an amicable resolution. They can do so at any time by submitting a joint request to suspend the proceedings, but the suspension will be free of charge only before the start of the opposition proceedings (during the so-called “cooling-off period”) and for the first three suspensions. Several suspensions of four months can be requested.

The owner of an earlier trade mark has the following grounds for filing an opposition against the registration of a trade mark application.

• Preventing identical reproduction of the earlier trade mark: the contested application is identical to an earlier trade mark, and the goods or services for which the trade mark is applied for are identical to the goods or services for which the earlier trade mark is protected.
• Preventing the imitation of the earlier trade mark leading to a risk of confusion for the public: due to the contested application’s similarity to the earlier trade mark and the similarity of the goods or services covered by the trade marks at stake, there is a likelihood of confusion on the part of the public (which includes the likelihood of association with the earlier trade mark).
• Preventing the dilution of the earlier trade mark: the contested application is identical or similar to an earlier trade mark, regardless of whether the goods or services for which it is applied or registered are identical or similar to or not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Benelux territory and the use of the later trade mark without due cause would take unfair advantage of or be detrimental to the distinctive character or the reputation of the earlier trade mark.

The owner (or a licensee authorised to act as such and whose licence is recorded on the BOIP register) of a trade mark valid in the Benelux territory can oppose an application for a Benelux trade mark. This includes a Benelux trade mark, an EU trade mark, an international trade mark protected in the Benelux or in the EU, or a well-known trade mark that has a reputation in the Benelux.

Holders of rights over PDO and PGI may also file an opposition under certain conditions.

The opponent is not obliged to be represented but a correspondence address within the EEA must be provided if the opponent's domicile or its corporate seat is not located in the EEA.

The BOIP fees for an opposition start at EUR1,045. Surcharges may apply if more than three rights are invoked (EUR105 per right after the third right).

The opposition procedure is as follows.

• Checking the minimal legal requirements: the BOIP checks the accuracy and completeness of the information provided, and provides the parties with a notification of admissibility.
• Cooling-off period: there is a two-month period from the notification of admissibility during which the parties are invited to reach an amicable settlement.
• Exchange of arguments: after the end of the cooling-off period and if the parties did not reach an amicable settlement, each party has one round to submit arguments and supporting documents, starting with the opponent. Where applicable, the applicant may request proof of use of the earlier trade mark. If the BOIP deems it necessary, it may request the submission of more arguments or documents for the purpose of hearing both sides of an argument.
• Hearing: this is ex officio or at the request of the parties (provided that a hearing is considered necessary by the BOIP).
• Decision reached by the BOIP: if the opposition is held to be justified or partially justified, the BOIP will refuse to register the trade mark in whole or in part. Otherwise, the opposition will be rejected.

The opposition decision rendered by the BOIP may be appealed to the Benelux Court of Justice within two months from the notification of the decision.

The Benelux Convention does not provide any timeframe for filing a revocation or cancellation proceeding.

However, the owner of an earlier trade mark who has tolerated the use of a later registered trade mark for a period of five consecutive years with knowledge of such use may no longer request invalidity, on the basis of this earlier trade mark, for the goods or services for which the later trade mark was used, unless registration of the later trade mark was applied for in bad faith.

There are no revocation/cancellation proceedings for author’s rights (as there is no registration thereof under Luxembourg law).

Cancellation

The reasons for cancellation of a Benelux trade mark are the same as for:

• the refusal of registration (please see 4.12 Refusal of Registration);
• the legal grounds for filing an opposition against a trade mark application (please see 5.2 Legal Grounds for Filing an Opposition).

In addition, a Benelux trade mark can be cancelled when:

• an agent or representative of the owner of the trade mark has applied for registration in his/her own name without the owner’s authorisation (unless justified);
• an application for a PDO or PGI had already been submitted (in some cases); or
• there is a risk of dilution of a well-known trade mark.

Revocation

A Benelux trade mark can be revoked when:

• after its registration, the trade mark has become the common name in the trade of a good or service in respect of which it is registered, because of the owner's activity or inactivity;
• it may mislead the public as to the nature, quality or geographical origin of such goods or services by reason of the use made of the trade mark; or
• the trade mark has not been put into genuine use in the Benelux territory within five years following the registration date of the trade mark, in connection with the goods or services in respect of which it is registered, or if such use has been suspended for a continuous five-year period.

Before the Courts

Invalidity on absolute grounds may be requested by any interested party, including the Public Prosecutor.

Invalidity on relative grounds may be invoked by any interested party where the owner of the earlier trade mark or the person entitled to exercise the rights related to PDO and PGI is a party to the proceedings.

Any interested party may invoke the revocation of a trade mark.

Before the BOIP

Invalidity or revocation based on absolute grounds may be initiated by any natural or legal person and any group or body set up for the purpose of representing the interests of its members (such as consumers or traders), as long as it has the capacity to sue in its own name and to be sued.

Depending on the case, invalidity or revocation based on relative grounds may be initiated by:

• the owners of earlier trade marks and the licensees authorised by those owners;
• the owners of a trade mark registered by an agent or representative in its own name and without authorisation; or
• the parties authorised to defend PDO and PGI and to exercise the rights in relation to the defence of such identifiers.

Revocation and cancellation actions related to trade marks can be brought before either the BOIP or the courts. However, the procedure will be suspended before the BOIP if the contested trade mark is the subject of a legal action for invalidity or revocation before a court.

Revocation and cancellation may be requested in respect of all or some of the goods and/or services designated by the trade mark.

Before the BOIP, the claimant may amend or extend the grounds on which the request for invalidation or revocation is based in the course of the procedure, no later than the submission of its arguments.

If revocation or cancellation is invoked with infringement, the means of action will be heard together.

A trade mark is liable to be declared invalid if the registration was made in bad faith by the applicant. This will be the case when the trade mark application was made in the knowledge that the sign belongs to a third party, or when the application was made for punitive or blocking purposes.

Trade Marks

Benelux trade marks may be assigned for all or some of the goods and services for which they are registered. The assignment will become opposable against third parties only after its recordal on the BOIP register and the payment of the fees due. In practice, most transfers are put in writing. Assignment between living persons must be in writing; otherwise it will be null and void.

If the assignment is not made for the whole Benelux, it will also be null and void.

Trade mark rights are transmissible upon death, as they are considered movable assets (bien meuble).

Authors’ Rights

The Authors’ Rights Law provides that, vis-à-vis the author, the assignment of economic rights must be proved in writing and is interpreted restrictively in the author's favour. This requirement does not exist for moral rights.

The assignment of modes of exploitation unknown at the date of the assignment contract is only authorised if it is subject to specific remuneration. In the context of the transposition into Luxembourg law of Directive (EU) 2019/790 of 17 April 2019 on copyright and related rights in the Digital Single Market, it has been specified since April 2022 that authors are entitled to appropriate and proportionate remuneration when they license or transfer their exclusive rights for the exploitation of their works.

The partial assignments of authors’ rights is permitted to the extent that the holder of the authors’ rights may decide to assign specific economic rights or moral rights and not others to a third party.

Authors’ rights are transmissible upon death.

Trade Marks

Benelux trade marks may be licensed for some or all of the goods or services for which they are registered. Licences can cover the whole or part of the Benelux territory, and can be exclusive or non-exclusive. The licence will become opposable against third parties only after its recordal on the BOIP register and the payment of the fees due. In practice, most licences are put in writing.

Authors’ Rights

The legal regime provided for the assignment of economic rights also applies to the licensing of economic rights. Therefore, vis-à-vis the author, the licensing of economic rights must be proved in writing and is interpreted restrictively in the author's favour. Since April 2022, the Authors’ Rights Law has also provided that authors are entitled to appropriate and proportionate remuneration when they license their exclusive rights for the exploitation of their works.

The licensing of authors’ rights may be granted on an exclusive basis or a non-exclusive basis. Licences cannot be perpetual, since authors’ rights are limited in time. Licences can be granted for the whole legal period of protection.

It is possible to assign or license an application for a Benelux trade mark. However, enforcing such title would be difficult while the application is pending.

Authors’ rights are not registered rights so there is no application for authors’ rights under Luxembourg law.

If opposability against third parties is sought, a trade mark assignment or licence will have to be registered on the BOIP register. The assignment or licence remains valid between the parties in the absence of registration.

Assignments or licences of authors’ rights do not need to be registered or recorded since there is no register of author’s rights in Luxembourg.

Where an author has licensed or transferred their rights in a work (except for software) on an exclusive basis, that author may revoke the licence or transfer of rights in whole or in part, or may terminate the exclusivity of a contract, if the work is not exploited within the agreed period. Such period may not be contrary to honest practices in the profession, unless it offers a higher degree of protection to the author. If the contract does not set this time limit, it is set in accordance with honest practices in the profession for the type of work concerned.

If the transferee or licensee does not fulfil their obligation within the time limits set out above without a legitimate excuse, the author may revoke their rights transferred or granted under exclusive licence, in whole or in part, or may terminate the exclusivity of a contract, after a formal notice has remained without effect for a reasonable period set by the author.

This rule came into force in April 2022 and does not apply if the work includes the contribution of several authors or performers, in which the individual contribution of the author wishing to exercise the right of revocation is of such minor importance that the contributions and legitimate interests of all authors and performers concerned by the application of the revocation mechanism would be prejudiced by the exercise of that right.

A trade mark and a trade mark application can be given as security, be subject to rights in rem or be levied in execution. The security is perfected only once it has been recorded in the BOIP register.

With respect to authors’ rights, economic rights can be subject to rights in rem since they can be assigned or licensed to a third party. As author’s rights are not registered, they cannot be subject to a pledge (contrary to the royalties resulting from authors’ rights).

The Benelux Convention does not lay down any specific time limit for bringing an action for trade mark infringement, nor does Luxembourg law provide that authors’ rights infringement actions must be brought within a specific time limit.

However, infringement claims are subject to limitation periods for civil actions, of ten years as from the knowledge of the infringement acts between merchants or between merchants and non-merchants, or 30 years between non-merchants.

Trade Marks

Before the civil courts, the owner of a registered Benelux trade mark may take action against any infringer, in particular on the grounds listed in Article 2.20 of the Benelux Convention.

The trade mark owner can challenge the violation of any of the exclusive rights conferred by the Benelux Convention to a trade mark owner, such as:

• the use, in the course of trade, of a sign identical to the trade mark for goods or services identical to those for which the trade mark is registered; or
• the use of an identical or similar sign for goods or services identical or similar to the goods or services for which the trade mark is registered, if there is a risk of confusion on the part of the public.

The owner of a well-known trade mark renowned in the Benelux can only request the invalidity of a trade mark application or a trade mark in accordance with the provisions of the Benelux Convention.

The Benelux Convention also provides legal claims to the trade mark owner where the earlier trade mark has a reputation and the subsequent sign is used (in relation to goods and/or services, or not) without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.

Authors’ Rights

An authors’ rights holder benefits from two legal avenues in case of infringements of their authors’ rights: civil actions and criminal actions. In practice, civil actions are much more common to pursue infringement.

Authors’ rights infringement is constituted when a third party uses the monopoly (ie, exclusive rights) granted to the authors’ rights holder over an original work without any authorisation from the authors’ rights holder, and no exception to authors’ rights may apply.

An infringement of authors’ rights exists even if it was unintentional. Infringement occurs when the elements, or even a single element, that make up the originality of a work are reproduced in another work, even if there is no danger of confusion between the two works.

Specific authors’ rights claims may also be brought before the criminal courts as follows.

• If a third party does not comply with the ban on removing or altering any rights management information in electronic form, or on distributing, broadcasting, communicating to the public or making available to the public of works, whose rights management information in electronic form has been removed or altered without authorisation and knowingly. “Rights management information” refers to any information provided by authors’ rights holders that identifies the work, the author or any other right holder but also, as the case may be, the terms and conditions of use of the work, and any number or code representing that information.
• If a third party does not comply with the ban on circumventing any effective technological measure by a third party, knowingly. The prohibition provided for by the Authors’ Rights Law extends to the manufacturing, importation, distribution, sale or lease of devices, products, components or services aiming at circumventing any effective technological measure. The Authors’ Rights Law also provides for exceptions in order to guarantee legitimate access to the works. “Technological measure” refers to any technology, device or component which, in the normal course of its operation, is intended to prevent or limit, in relation to protected works (except computer programs), acts that are not authorised by the holder of authors’ rights. Access codes, encryption, scrambling and copy control mechanisms achieving their protection objective are defined as technological measures that are deemed effective.

The above-mentioned offences are sanctioned by criminal fines of between EUR251 and EUR250,000 if the offender is not acting for strictly private purposes.

Trade Marks

As indicated in 8.2 Legal Claims for Infringement Lawsuits and Their Standards, the following legal conditions must be met in order for infringement to be established:

• the earlier trade mark and the subsequent sign must be identical or similar;
• the goods and services covered by the trade mark and the sign must be identical or similar; and
• the sign must have been used in the course of trade.

Where the earlier trade mark and the subsequent sign and/or the goods and/or services at stake are only similar, the trade mark owner must also demonstrate a risk of confusion in the public’s mind.

The factors taken into consideration by the courts are greatly inspired by EU case law. Therefore, the courts must globally assess the risk of confusion, and such assessment implies a certain interdependence between the factors taken into account.

The reputation of the trade mark on the market is also a relevant factor in the likelihood of confusion, as it gives the trade mark a special distinctive character and offers it greater protection.

Lastly, another element taken into consideration by the courts is the distinctive character of the trade mark, which influences the extent of protection to be granted.

It is settled case law that the good faith of the infringer is irrelevant to the characterisation of the infringement.

Authors’ Rights

Infringement is assessed on the basis of similarities with the original work and not on the basis of differences. This factor was established by case law. The absence of confusion between the original work and the copy or the price difference between them are not taken into consideration when assessing infringement.

Trade Marks

A trade mark owner can initiate an action for trade mark infringement against the alleged infringing party. The licensee of a trade mark may also initiate proceedings for infringement if the trade mark owner consents thereto. However, an exclusive licensee may initiate proceedings if the trade mark owner, after formal notice, does not bring infringement proceedings themselves within an appropriate period.

Authors’ Rights

For civil actions, the claimant in an infringement action is the holder of the authors’ rights or the licensee of the authors’ rights to the extent the licensing agreement provides that the licensee has the right to introduce an infringement action. Both are considered interested parties.

Collective management organisations authorised under the Authors’ Rights Law to manage or administer authors’ rights or related rights may request the cessation of infringement acts.

For criminal actions, the claimant is the public prosecutor (however, the holder of the authors’ rights will be able to sue for damages).

In trade mark or authors’ rights infringement proceedings, the defendant will be the natural or legal person having infringed the exclusive rights or the intermediaries that have assisted the defendant in the infringement acts.

It is possible for a third party to join ongoing proceedings. The third party may either be compelled to participate or may participate voluntarily. Compulsory intervention may only be directed against a third party against whom it is in the interests of the parties to enforce the judgment and who could, in this case, have filed a third-party objection against the decision to be rendered (tierce opposition). Voluntary intervention is also only admissible on the part of a third party who could have opposed the decision (tierce opposition) or if that third party has a legitimate, personal and sufficient interest (direct or indirect, material or moral) or a simple unfavourable situation that could be created by a judicial decision.

The judge will decide whether or not to accept the intervention on a case-by-case basis, depending on the fulfilment of the conditions described above.

General class actions do not exist under Luxembourg law. Bill No 7650 concerning the introduction of consumer class action lawsuits was introduced on 14 August 2020, with the objective of introducing a collective action in Luxembourg law. The bill has still not been passed and is subject to amendments.

There is no prerequisite to filing a trade mark or an authors’ rights lawsuit, but the prior sending of a formal demand letter is common and recommended.

Initiating abusive or vexatious proceedings can be sanctioned.

With respect to trade marks, opposition proceedings must be introduced before the BOIP; revocation and cancellation proceedings may also be introduced before the BOIP. In these three fields, the decisions of the BOIP may be appealed to the Benelux Court of Justice.

If a claim is brought before judicial courts, for civil actions in the merits, the Tribunal d’arrondissement has jurisdiction to hear trade mark matters and authors’ rights at first instance. In certain circumstances involving authors’ rights, the matter can be brought before the judge presiding over the Tribunal d’arrondissement (in which case, no damages can be claimed, only cessation measures and the publishing or posting of the judgment). The Court of Appeal will have jurisdiction at second instance. Finally, the Cour de cassation (Supreme Court) would have jurisdiction at third instance.

It is recommended to prepare well before filing a lawsuit for trade mark or authors’ rights infringement. The gathering of evidence (bailiff’s report, seizure) and the sending of warning letters will incur costs. Representation by a lawyer in trade mark and authors’ right litigation matters is mandatory (before the Cour de cassation, the Court of Appeal and the Tribunal d’arrondissement when the civil procedure is applicable).

Only the owners of EU or Benelux trade marks may bring infringement claims in Luxembourg. Foreign authors’ rights holders may bring infringement claims in Luxembourg if the infringement occurs in Luxembourg and the defendant is domiciled in Luxembourg.

An infringement action will start with a writ of summons. Infringement proceedings may be preceded by an infringement seizure to gather evidence of infringement.

In the writ of summons initiating a trade mark lawsuit for infringement, the claimant must clearly identify the earlier trade mark(s) on which the claims are based, and document the infringement acts. If the claimant relies on a well-known trade mark, evidence of the renown must be submitted.

In response, where relevant, the defendant may make counterclaims requesting the cancellation or revocation of the opposing trade mark.

In the writ of summons initiating an authors’ rights lawsuit, it is recommended to clearly describe the various features that render the work original, as well as the infringements acts.

In oral proceedings (such as summary proceedings), the judge summons the parties to a hearing. In principle, the proceedings are closed after this hearing and it is no longer possible to submit new arguments.

In written proceedings, the parties may always submit new arguments by way of written pleadings, as long as proceedings are not closed. However, in both oral and written proceedings, the defendant may request the inadmissibility of a new claim (demande nouvelle) – ie, one that differs from the original claim in one of its constituent elements, object, cause or party.

Declaratory judgments exist in Luxembourg, but Luxembourg law does not recognise a “pure” declaratory action – ie, one whose purpose is simply to ask the courts for advice and which would be totally disconnected from the concept of having an interest in taking legal action (intérêt à agir).

Therefore, for a declaratory action to be admissible, it must meet two cumulative conditions:

• there must be a serious and severe threat to a party’s right to the extent of creating a specific disturbance; and
• the judicial declaration must be of such a nature as to provide the claimant with a concrete and specific benefit.

The Benelux Convention and the Authors’ Rights Law do not provide for declaratory judgment proceedings, but case law has recognised the admissibility of a claim aiming at knowing from the judge whether the use of a trade mark was lawful considering the existence of earlier rights. The court has underlined that “the plaintiff has a clear economic interest in obtaining the judicial declaration it is seeking, which will enable it (if the court finds in its favour) to continue to exploit the trade mark it has registered in complete safety”.

Luxembourg does not provide an alternative avenue to resolve small trade mark or authors’ rights claims, except for the possibility for the parties to settle if they wish to do so.

Case law has ruled that a trade mark infringement action must be suspended pending a final decision on the application for revocation or cancellation of the trade mark concerned (which is the basis for the infringement action) which would be pending before the BOIP. This is in the interests of the proper administration of justice, because the owner of the trade mark concerned will no longer be able to bring an infringement action on the basis of this trade mark if it is cancelled or revoked by the BOIP.

However, in this case the stay of proceedings is optional and the judge has discretionary power in this regard.

Trade Marks

Counterfeiting can trigger criminal liability (please see 9.6 Infringement as an Administrative or Criminal Offence).

Authors’ Rights

Under the Authors’ Rights Law, any malicious or fraudulent infringement of authors’ rights constitutes the offence of counterfeiting, which is subject to criminal sanctions. Counterfeiting may take different forms (sale, importation, reproduction, communication to the public, etc), but the intentional nature of the violation is essential.

The offence of counterfeiting is punished by criminal fines of between EUR251 and EUR250,000) or confiscation or destruction of the infringing works and their carriers, moulds, utensils, etc. Any repeat offence is punished by imprisonment of between three months and two years or a fine of between EUR500 and EUR500,000, or both. The court may also order (in addition) the closure of the establishment operated by the convicted person, either permanently or temporarily for a period specified by the court (not exceeding five years). The sentence can also be published and posted.

In the case of counterfeiting, legal entities are jointly and severally liable for any fines, confiscations and penalties imposed on their directors, representatives and agents.

Luxembourg law provides special procedural provisions for trade mark and authors’ rights proceedings regarding the measures for preserving evidence, such as the infringement seizure (saisie contrefaçon – please see 9.3 Obtaining Information and Evidence), or provisional and precautionary measures (please see 11.1 Injunctive Remedies).

Luxembourg does not have specialised intellectual property courts for IP cases. IP cases are not determined by technical judges but by the same judges as for civil and commercial matters (with the help of technical experts if needed).

The parties do not have an influence on who is the decision-maker. If the holder of the authors’ rights decides to request cessation measures only, the matter may be referred to the presiding judge of the civil chamber of the Tribunal d’arrondissement (please see 8.7 Lawsuit Procedure).

Except for well-known trade marks, the assertion of trade mark rights before the courts is subject to the registration of the trade mark.

During the first five years of existence of the trade mark (as of its registration), the defendant in infringement proceedings cannot invoke the non-use of the trade mark and request the revocation of the opposing trade mark on that ground.

The trade mark owner is entitled to prohibit the use of a subsequent sign or trade mark even if the goods and services at stake are only similar. Under certain circumstances (including a risk to the reputation of the earlier trade mark), use of the subsequent sign as an indicator of origin for goods and services is not even a condition for requesting the cessation of the use of the subsequent sign (please see 2.3 Trade Mark Rights).

Some proceedings are at the disposal of the trade mark owner or the holder of authors’ rights to obtain relevant information and evidence from the other party or a third party regarding the alleged infringement.

Before Any Proceedings on the Merits

The rights holder may request from the presiding judge of the court of first instance the authorisation to carry out (through experts), in any place, a description of all objects, elements, documents or processes likely to establish the alleged infringement, as well as the origin, destination and extent thereof. The authorisation from the judge may extend to the seizure of samples of the alleged infringing goods and of the materials and instruments used to produce or distribute these infringing goods.

To obtain the authorisation from the judge as to the description of the infringing goods, the rights holder must demonstrate that:

• the IP right whose protection is invoked is, to all appearances, valid; and
• there are indications that the IP right concerned has been infringed or is about to be infringed.

If the seizure measures are requested, the judge must also examine whether:

• the IP infringement cannot reasonably be challenged; and
• facts and documents relied upon by the rights holder may reasonably justify seizure measures, taking into consideration all the interests at stake.

If the description or the seizure are not followed by the introduction of an action on the merits within the deadline set in the order (or, in the absence of such deadline, within a month of the sending of the expert’s report), the order ceases to have effect upon the alleged infringer’s request.

During the Court Proceedings

If the court finds that there has been an infringement, it may, at the request of the rights holder, order the infringer to provide the rights holder with all the information in its possession concerning the origin and distribution networks of the infringing goods and services (such as names and addresses of the producers, manufacturers, distributors and other previous holders of the goods or services, and information on the quantities at stake and on the price obtained), provided that this is a justified and proportionate measure.

The order may also be issued against anyone who is in possession of the infringing goods on a commercial scale, who has used the infringing services on a commercial scale or who has provided, on a commercial scale, services used in infringing activities.

Infringement can be proven by any means.

In trade mark infringement actions, surveys among a population panel may be used to demonstrate:

• a risk of confusion in the public’s mind between the earlier trade mark and the subsequent sign or trade mark;
• the distinctive nature of the earlier trade mark; or
• the reputation of the earlier trade mark.

The use of surveys is not that common in Luxembourg.

The costs related to infringement actions may vary depending on several factors, including:

• the costs incurred to build up evidence (eg, infringement seizures);
• the costs incurred to gather evidence showing the reputation of the earlier trade mark; and
• the complexity of the case and the nature of the arguments opposed by the defendant or the existence of counterclaims.

Pursuant to Article 173 of the Luxembourg Criminal Code, trade mark infringement can constitute a criminal offence and be enforced through criminal channels. The counterfeiter would incur fines of up to EUR75,000 and imprisonment of between three months and five years. The act of “counterfeiting, altering or falsifying seals, stamps, hallmarks or trademarks, or using counterfeit, altered or falsified seals, stamps, hallmarks or trademarks” can be characterised in particular as a criminal offence (Article 173 of the Luxembourg Criminal Code).

In addition and depending on the exact act, the counterfeiter could also be found guilty of a breach of customs legislation, by importing goods requiring special authorisations that the counterfeit goods would not have obtained. This could lead to up to one year's imprisonment and a fine calculated according to the amount of customs duties fraudulently evaded.

Authors’ right infringement can also constitute a criminal offence under the conditions provided for in the Law of Authors’ Rights (see 8.12 Counterfeiting and Bootlegging).

In trade mark infringement actions, the following may be available means of defence for the defendant, depending on the circumstances:

• the absence of genuine use of the opposing trade mark (and therefore requesting the revocation of the earlier trade mark via a counterclaim) (please see 6.2 Legal Grounds for Filing a Revocation/Cancellation Proceeding);
• the fact that the owner of the earlier trade mark has tolerated, for a period of five successive years, the use of the subsequent trade mark which is challenged, while being aware of such use (this means of defence will not apply if the alleged infringer has registered the subsequent trade mark in bad faith); and
• the trade mark rights are exhausted (please see 10.5 Exhaustion).

The Benelux Convention also provides several exceptions to the exclusive rights of a trade mark owner. For example, a trade mark owner cannot prohibit the following uses, in the course of trade, to the extent such uses are made in accordance with honest practices in industrial or commercial matters:

• use by an individual of his/her name or address;
• use by a third party of signs or indications that are not distinctive or use thereof in a descriptive way (as a reference to the kind, quality or quantity of the goods or services); or
• use by a third party of the trade mark as a necessary reference to indicate the intended purpose of a good or service (for accessories or spare parts compatible with the goods or services bearing the trade mark).

The Authors’ Rights Law does not provide for a general fair use exception, but lists all the exceptions that limit the prerogatives of the holder of authors' rights when the work has been lawfully made available to the public. Moreover, the exercise of an exception must not conflict with the normal exploitation of the work and must not unreasonably prejudice the legitimate interests of the holder of the authors’ rights.

For example, the holder of authors’ rights is not entitled to prohibit caricature, parody or pastiche for the purpose of mocking the work being parodied, on the condition that such caricature, parody or pastiche complies with good practice in this field (ie, only the elements strictly necessary for the caricature must be borrowed, and the caricature must not denigrate the work).

The Authors’ Rights Law provides for a short quote exception, which is largely regulated. The holder of authors’ rights cannot prohibit short quotations from the protected work if they are justified by the critical, polemical, educational, scientific or informative nature of the work in which the quotations are incorporated. However, this exception will only apply if these short quotations:

• are in line with good practice in this field;
• are not profit-making;
• are justified by the aim pursued;
• do not prejudice the work or its exploitation; and
• mention the name of the author and the title of the work reproduced or quoted if this information appears in the source.

The Authors’ Rights Law provides an exception for private copying, under which the holder of authors’ rights cannot prohibit the reproduction of the protected work on any medium by a natural person for private use and for purposes that are not directly or indirectly commercial.

However, the use of this exception is conditioned on the payment of fair compensation to the authors’ rights holder. The Author’s Rights Law provides that a grand ducal regulation shall specify the conditions for fixing and collecting such fair compensation, but it has not yet been adopted. Therefore, the private copying exception in Luxembourg is theoretical.

With respect to authors’ rights, a legal exception concerns the right to carry out a provisional reproduction (transitory or accessory) that constitutes an integral and essential part of a technical process and has no independent economic significance, with the only aim being to allow transmission in a network between third parties by an intermediary.

In a general manner, Luxembourg law provides that the intermediaries that have assisted the defendant in the infringement acts may be subject to a cease order from the court.

A trade mark owner is not entitled to prohibit its use for goods that have been put on the market in the EEA under that trade mark by the owner or with their consent, unless there are legitimate grounds for the owner to oppose further distribution of the goods.

Luxembourg follows the doctrine of first sale regarding the distribution right granted to the holder of authors’ rights. The distribution right is exhausted within the EU once the holder of authors’ rights has consented to the first sale of the protected work (original or copies) within the EU.

The Authors’ Rights Law provides for exceptions to the benefit in particular of libraries and archives when a work has lawfully been made available to the public. The holder of authors’ rights cannot prohibit the following:

• reproductions and extractions carried out by research organisations and libraries accessible to the public, museums, archives or institutions that are depositories of a cinematographic or sound heritage (“Institutions”), with a view to carrying out a text and data mining of works to which they have lawful access, for scientific research purposes;
• reproduction of a work by the Institutions, without seeking a direct or indirect commercial or economic advantage, carried out for the sole purpose of preserving the heritage and carrying out any work reasonably useful for safeguarding this work, provided that it does not interfere with the normal exploitation of the works and does not prejudice the legitimate interests of the authors; or
• public communication of audiovisual works by the Institutions for the purpose of promoting cultural heritage, provided that such communication is analog and takes place within the Institution's premises.

Injunctive remedies in the form of summary proceedings available for a trade mark owner or the holder of authors’ rights are provided for by the Law of 22 May 2009. They allow the judge to order one of the following:

• measures intended to prevent any imminent trade mark or authors’ rights infringement;
• measures intended to forbid, on a provisional basis, the continuation of the alleged infringement acts;
• that the continuation of the alleged infringement acts be made subject to the lodging of guarantees intended to ensure the compensation of the claimant;
• the seizure of the goods suspected of infringing an IP right, so as to prevent their entry into the channels of commerce; or
• the freezing of bank accounts (if additional conditions are met).

These orders may target the alleged infringer or intermediaries whose services are used by a third party to commit infringement acts.

In order to assess whether the remedy must be ordered, the judge will take into account whether:

• the existence of the IP right concerned is validly established;
• the infringement or threat of infringement cannot be validly challenged; and
• in the case of a seizure, the facts and the evidence are such as to reasonably justify the seizure, also taking all the interests at stake into consideration, including the general interest.

These injunctive remedies shall be followed by the initiation of proceedings on the merits within a deadline determined by the judge ordering the measures, or within one month from the notification of the order.

A preliminary injunction is not necessarily subject to the posting of a bond but the bond or an equivalent guarantee may be requested from the claimant by the judge to guarantee the possible compensation for any loss suffered by the defendant in the event a decision on the merits concludes that there was no infringement. The bond amount would be determined by the judge.

Injunctive remedies may also be requested in an action on the merits (cessation of the infringement, recall of infringing goods, destruction of the goods infringing the earlier trade mark, destruction of the materials and tools used in the creation or manufacture of infringing goods, etc).

The trade mark owner or the holder of authors’ rights (the “Injured Party”) may claim damages for any loss suffered as a result of the infringement. The court will set the damages, taking into account all appropriate aspects, such as:

• the negative economic consequences including lost profits suffered by the Injured Party;
• any unfair profits made by the infringer; and
• in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the Injured Party by the infringement.

As an alternative, if requested by the Injured Party, the court may set a lump-sum damages award based on at least the amount of royalties or fees that would have been due if the infringer had requested authorisation to use the IP right in question.

In addition to the action for damages, or in place thereof, the Injured Party may bring an action for transfer of the profit made as a result of the infringement. However, the court will dismiss the request if it is not demonstrated that the infringer acted in bad faith or if the circumstances of the case do not justify the profit transfer.

The amount of damages requested must be documented.

A distinction is made between judicial costs and attorneys’ fees.

In principle, judicial costs must be paid by the party that loses the case. The amount of these costs are relatively low, as they generally only cover the costs for the notification of the claims or expert costs, if applicable. A procedural indemnity may also be awarded (based on Article 240 of the New Civil Procedure Code), which exists in the interests of fairness to cover certain costs not included in the judicial costs.

In principle, each party pays its own attorneys’ fees. However, the judge may award damages to cover (part of) attorneys’ fees in the event of misconduct on the part of the opposing party, particularly where the claimant has abusively sued the defendant.

Where any delay would cause irreparable prejudice to the trade mark owner or the holder of author’s rights, the provisional and precautionary measures (listed in 11.1 Injunctive Remedies) can be ordered at the request of the rights holder without notifying and hearing the defendant.

Customs seizures of counterfeits in Luxembourg are based on Regulation (EU) No 608/2013 of 12 June 2013 concerning customs enforcement of intellectual property rights.

The rights holder must submit an application requesting the intervention of the customs authorities for goods suspected of infringing its IP rights. The application is made using the form annexed to Commission Implementing Regulation (EU) No 1352/2013. The rights holder provides the customs authorities with information enabling them to authenticate the genuine goods (position of the trade mark on the product, distinctive features) as well as useful information for assessing the risk of infringement.

When customs authorities identify goods suspected of infringing an IP right covered by a decision granting an application, they suspend the release of the goods or detain them. Beforehand, they may ask the rights holder to provide any relevant information with respect to the goods.

The holder of the goods is notified within one working day of the suspension of the release of the goods or the detention of the goods by the customs authorities.

Both the rights holder and the declarant have the possibility to inspect the goods.

Several scenarios can then take place, including the destruction of the goods if the rights holder has confirmed in writing within ten working days (or three working days in the case of perishable goods) that an IP right has been infringed and that they agree to the destruction of the goods, and if the holder of the goods has also agreed, within the same deadline, on the destruction of the goods or remained silent.

If the conditions for destruction of the counterfeits are not met, the rights holder must initiate proceedings to determine whether an IP right has been infringed, within ten working days of notification of the suspension of the release or the detention of the goods. Otherwise, the goods will be released.

Customs authorities can also act without an express request from the rights holder if they identify goods suspected of infringing an IP right. In such case, they endeavour to locate the rights holder or the person or entity potentially entitled to submit the application. If no application is submitted, the goods are released.

Parties to trade mark or authors’ rights proceedings will have the same possibilities to settle cases as in other civil actions. At any time during legal proceedings, the parties may sign a settlement agreement, in which case the claimant withdraws its legal action before any judgment is rendered.

The judge's role includes reconciling the parties.

Except in certain areas of law (such as family law), there are no mandatory settlement conferences or court mediation. Prior to any legal dispute, a party may propose to use conventional mediation. The parties must then agree in writing on the terms of the mediation. The judge will have to approve the parties' agreement.

The judge may also invite the parties to enter into a mediation process, at any time, with the parties’ consent and as long as the case has not been taken under advisement (pris en délibéré).

Alternative dispute resolution for trade mark or authors’ rights infringement such as mediation or arbitration is allowed in Luxembourg, but it is not common.

In Luxembourg, a civil action will be suspended until a final decision has been made on a public action brought before or during the civil action (in accordance with the principle that “the criminal holds the civil as it stands”).

Please see 8.11 Effect of Trade Mark and Copyright Office Decisions regarding the relationship between trade mark infringements proceedings and pending procedures before the BOIP.

Trade mark and authors’ rights infringement decisions can be appealed to the Court of Appeal.

With respect to trade marks, decisions rendered by the BOIP can be appealed to the Benelux Court of Justice.

An appeal to the Court of Appeal must, in principle, be lodged within 40 days from the day of notification of the judgment. This timeframe is increased by a distance delay for those domiciled abroad. Indeed, persons residing abroad benefit from a distance period when legal proceedings are brought against them before a Luxembourg court. This period varies from 15 to 35 days, depending on the place of residence of the defendant.

An appeal may be lodged against the summary order within 15 days of notification.

The timeframe for filing an appeal to the Benelux Court of Justice is two months from notification of the BOIP final decision.

The appellate procedure for trade mark or authors’ rights proceedings is not subject to special provisions.

Both the Court of Appeal and the Benelux Court of Justice will make a full review of the facts of the appealed decision.

Personality rights coexist with trade mark and authors’ rights. The Benelux Convention provides that a Benelux trade mark shall not entitle the owner to prohibit a natural person from using his or her name in the course of trade.

Authors’ rights in Luxembourg also have a personal dimension in the form of moral rights, even though these moral rights relate not only to the author but also to the work. The Authors’ Rights Law provides that the author and the owner of a portrait do not have the right to reproduce, communicate or publicly exhibit the portrait without the consent of the individual concerned (or the individual’s heirs for 20 years from the date of death).

Actions based on unfair competition or parasitism in relation to IP rights are not regulated by special laws and rely on Articles 1382 and 1383 of the Civil Code.

Unfair competition will be used as an alternate legal ground if infringement is not confirmed by the court, or as an additional legal ground if distinct facts causing damage can be identified on top of infringement acts.

As of January 2024, Luxembourg courts have not yet rendered any published decisions on the impact of trade mark and authors’ rights laws on the use of artificial intelligence.

The Authors’ Rights Law was modified in 2022 to transpose the new Copyright Directive (EU Directive 2019/790), creating an authorisation mechanism and a new liability regime regarding specific uses of protected content by online content-sharing service providers. Certain providers of services are not concerned by these new rules, such as online marketplaces and providers of electronic communications services.

The entry into application of the Digital Services Act (EU Regulation 2022/2065) (from 17 February 2024) will also greatly impact providers of digital services (online intermediaries and platforms) since illegal content is defined broadly and encompasses illegal products, services and activities. Therefore, the sale of counterfeit goods or the non-authorised use of material protected under authors’ rights are targeted by the new rules set out in the Digital Services Act.

There are no special rules regarding trade marks or authors’ rights as used in business.