Trade Marks & Copyright 2024 Comparisons

In listing the laws that govern trade mark and copyright in the Dutch jurisdiction, a distinction must be made between Dutch laws and Benelux and EU regulations and directives. 

The laws that govern trade marks and copyrights in the Netherlands are the following:

• Nationally, the “Copyright Act” (Auteurswet) is the largest statutory regime. This act is nationally applicable and protects creators of literary, scientific, or artistic works against copyright infringement.
• Second, there is the “Trade Name Act” (Handelsnaamwet), which protects companies against other persons using their company name.

The Benelux Convention on Intellectual Property (BCIP) is applicable in the Netherlands for the prosecution and protection of Benelux trademarks.

Under EU law, the Netherlands is also subject to the following regulations and directives:

• Directive (EU) 2019/790 (“DSM Directive”) on copyright and related rights in the Digital Single Market;
• Directive (EU) (“Rental and Lending Directive”) on renting and lending rights and on certain rights related to copyright in the field of intellectual property;
• Directive (EU) 2001/29 (“Infosoc Directive”) on the harmonisation of certain aspects of copyright and related rights in the information society;
• Directive (EU) (“Resale Directive”) on the resale right for the benefit of the author of an original work of art;
• Directive (EU) 2001/84 (“Satellite and Cable Directive”) on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission;
• Directive (EU) 2004/48 (IPRED) on the enforcement of intellectual property rights;
• Directive (EU) 2006/116 (“Term Directive”) on the term of protection of copyright and certain related rights amending the previous 2006 Directive;
• Directive (EU) 2012/28 (“Orphan Works Directive”) on certain permitted uses of orphan works;
• Directive (EU) 2019/789 (“Satellite and Cable II”) on the exercise of copyright and related rights applicable to certain online transmissions of broadcasting organisations and retransmissions of television and radio programmes;
• Digital Services Act Regulation (EU) 2022/2065 (“DSA”), which has bearing on the protection of copyrights and trade mark rights in the digital space; and
• Regulation (EU) 2017/1001 (“Trade Mark Regulation”) on the European Union trade mark.

The Infosoc Directive and DSM Directive are implemented in the Dutch Copyright Act. In addition, the BCIP and Trade Mark Regulation contain almost identical provisions concerning the issues discussed in this chapter.

The Netherlands is also party to:

• the Berne Convention, which harmonises certain aspects in relation to copyright and related rights;
• the Trade Mark Law Treaty, which provides for a harmonisation of the trade mark registration process internationally;
• the Madrid Agreement, which is a protocol that allows for international registration of trade marks;
• the TRIPS Agreement, which sets out the minimum standards of protection to be provided by each member;
• the WIPO Copyright Treaty; and
• the WIPO Performances and Phonograms Treaty.

All of these treaties, conventions, and agreements are self-executing.

The Berne Convention, TRIPS Agreement and Madrid Agreement govern the rights of foreign trade mark or copyright holders in the Netherlands.

The Netherlands recognises word marks, figurative marks, figurative marks with word elements (eg, logos displaying the brand name), shape marks, colour marks, sound marks, pattern marks, position marks, hologram marks, motion marks, and multimedia marks.

In addition, it is possible to register certification and collective marks. Certification marks set out the standard for being able to use the mark. Collective marks can only be held by public law entities (eg, geographic indicators).

Industrial designs are generally precluded from trade mark protection insofar as they are used to protect a purely functional design. However, there are limited exceptions to this rule of thumb. For instance, the display of a Lego block on watches has been deemed valid by the Court of Justice of the European Union (CJEU).

The Netherlands has exclusively designated the use of certain titles by statute. Primary examples of this are terms such as “Koninklijke” (“royal”) and the designation of a “Ridder” (“Sir”).

The Netherlands does not protect marks that are famous outside the jurisdiction but are not yet in use within the Netherlands. A notable example of this principle is the legal battle involving the American fast-food chain Wendy’s against a local Dutch eatery using the same name. In this case, Wendy’s based its claim on its global fame among other factors. The Dutch Court of Appeals ruled in favour of the local Dutch eatery.

In order to register a trade mark in the Benelux or European Union, the application must withstand relative and absolute grounds for protection. Relative grounds include whether there is a prior registration that could conflict with the relevant mark. Absolute grounds focus on the inherent characteristics of the trade mark. The most important threshold is that the trade mark must be distinctive. The acquiring party only has a duty to prove or remedy a lack of distinctiveness if the registering office determines that this threshold is not met. The factors to be considered in the assessment of distinctiveness are as follows:

• The trademark should be capable of identifying the products and/or services offered by the company as distinct from those offered by other companies.
• This assessment must be made concerning the goods and/or services offered by the company. The perspective of a “reasonably well-informed and reasonably observant and circumspect” consumer of the respective goods and services is taken into account.

Trade mark owners have the right to exclusive use of the trade mark, including to authorise or prohibit others from using the trade mark. In addition, the trade mark owners can address unauthorised users by filing injunctions and/or claiming damages. These rights are outlined by the BCIP and the Trade Mark Act. These rights persist throughout the term of a mark.

The BCIP and the Trade Mark Act have incorporated an anti-circumvention right through the absolute grounds for protection, which precludes registration of trade marks with an essentially technical function.

In the Netherlands, the protection of trade marks can only be derived from the registration thereof. However, it is possible to lose the registration of a trade mark if it is not used for a period of five years. Use in this sense is defined as “genuine use”. Genuine use is the use of the trade mark to market or sell the products and/or services for which the trade mark is registered. 

The use of a symbol to denote that a mark is registered is not necessary and has no legal effect under Dutch and European trade mark laws.

It is possible for trade marks to be protected by copyrights or related rights if they meet the respective thresholds. In case of copyright protection, this requires that the logo is sufficiently creative and that the work is the author’s own intellectual creation. Another possibility is that the trade mark is protected by local trade name laws. In the Netherlands, the Trade Name Act protects names used in business operations. Notably, registration is not required to receive protection for a trade name.

Virtually any type of work can be protected by copyright so long as the thresholds for copyright protection are met. The categories are therefore limitless. Industrial designs can be protected by copyright protection and can also separately enjoy the protection of a design right. However, in either case the appearance may not exclusively be dictated by a technical function. 

First, the work must be original in the sense that it is the author’s own intellectual creation. Second, the work must be the expression of such author’s own intellectual creation. Third, the work must be identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

Authorship is not defined by statute. The thresholds have been shaped by case law and are further explained in 3.2 Essential Elements of Copyright Protection. When an employee creates a work eligible for copyright protection within the scope of their job description, the copyrights in such work vest in the employer by operation of law. Authorship necessitates human effort, and the extent of this requirement is a topic of ongoing debate, especially concerning works created by AI. Ultimately, this subject will likely be crystalised by CJEU case law.

An author can claim authorship pseudonymously, but not anonymously. As further explained below, copyright-protected works cannot be registered. Therefore, in practice, the only reason to claim a copyright is to halt infringers. In order to do so, the burden of proof is on the author to prove they hold the copyright. This is impossible when the author is anonymous.

As to joint authorship, there are two situations in which this can arise:

• two or more parties co-create a work with a divisible share in the work; or
• the share in the work cannot be divided.

In the first scenario, each party may fully exploit their rights in their own share but need permission to exploit the work as a whole. In the second scenario, parties will always need each other’s permission in order to exploit the rights in the work.

The copyright owner holds the rights to reproduce the work and to communicate it to the public. These rights are outlined both by the Infosoc Directive and the Dutch Copyright Act.

The Netherlands recognises moral rights within copyrighted works. The moral rights granted under the Dutch Copyright Act include:

• the right of attribution (paternity right) is the right of the author to be named as the creator of the work whenever the work is used or communicated to the public;
• the right to object (integrity right) is the right of the author to object to any distortion, mutilation, or other modification of the work that could be prejudicial to the author’s honor or reputation;
• the right of disclosure (publication right) is the right of the author to decide when and how the work will be disclosed or published for the first time; and
• the right of withdrawal (withdrawal right) is the right of the author to withdraw the work from circulation if the manner of use or the purpose of use is contrary to the author’s reasonable interests.

These moral rights are generally inalienable, meaning they cannot be transferred to others. However, the right of withdrawal may be waived in certain circumstances.

Synchronisation rights are not recognised by statute, but are granted value in practice, for instance, through exploitation agreements between music creators and publicists.

The right stemming from the act of authorship grants a lifelong entitlement, extending to 70 years posthumously. This applies to all copyright-protected works.

The owner’s rights in the copyright-protected work are not tied to a registration. Therefore, the only way for an owner to lose such rights is by transferring, assigning or licensing away their rights.

Notices and symbols do not have any legal meaning in relation to copyright ownership under Dutch or EU laws.

Article 30a of the Dutch Copyright Act holds that the Dutch Minister of Justice may appoint a collective rights organisation to mediate between music authors and publishing companies or other parties who wish to exploit the music. The designated organisation goes by the name of Buma. Buma is a nonprofit organisation. While authors are not obligated to engage Buma’s services, the establishment of another organisation with similar or overlapping functions is prohibited under Dutch law.

Under Dutch and EU laws, it is not possible to register a copyright.        

The Dutch and EU law systems do not maintain a register for copyrights.

There is no register of copyrights under Dutch or EU laws, therefore such applications would not arise.

There is no register of copyrights under Dutch or EU laws, therefore such registrations would not arise.

Copyright-protected works can simultaneously be protected by trade mark rights, database rights, design rights, and other related rights, such as through tort claims.

Trade mark rights can only be acquired through registration of the mark either with the Benelux Office of Intellectual Property (BOIP) for Benelux coverage or the EU Intellectual Property Office (EUIPO) for coverage in all EU Member States. Trade mark rights cannot be derived from mere usage thereof. However, if a trade mark is not genuinely used for an uninterrupted period of five years, it can be invalidated. The process for registering trade marks is generally the same for each type of trade mark with the exception of certification or collective marks.

There are two relevant trade mark registers that apply to the Netherlands: (i) the BOIP trade mark register for registrations in relation to the Benelux; and (ii) the EUIPO trade mark register for registrations pertaining to all EU Member States. These registers are both publicly available on the respective office’s websites. These websites do not uphold different types of registers on their websites, but only one central searchable register for all trade marks. The above registers should be consulted before applying for registration of a trade mark.

Neither the Benelux nor the EU system allows for multiple registrations within the same application. However, they do allow for application of the same trade mark for multiple classes. 

The term for registration is ten years, which can be extended indefinitely for additional ten-year periods. Trade mark owners will have six months to renew their registrations after the terms have lapsed. However, it is possible and recommended to file for renewal in the six months preceding the expiration of the trade mark to prevent late fees.

If the trade mark expired and is past the six-month revival period, the only way to retrieve the trade mark registration is by reapplying for registration. It is not possible to update a trade mark registration without applying for a new trade mark registration.

The process of applying for a trade mark is fairly straightforward. The BOIP and EUIPO registers offer an online form, which must be completed. The required fee must be remitted before the registration is taken into consideration by the examiners. The examiners will then inform you if the application meets the absolute and relative requirements. If so, the application will be published in the register. Once the application is published, interested parties will have two (BOIP) or three (EUIPO) months to oppose the application. After these two or three months, if no oppositions have been received, the trade mark will be registered.

It is possible to apply for multi-class trade mark applications. The applicant will only need to provide the sign that it wishes to protect – no other materials are provided. The filing fees for the BOIP are EUR244 for a regular application and EUR440 for an accelerated application. The filing fees for the EUIPO are EUR850, for the second class an additional EUR50 is required, and for the third and more classes the costs are EUR150 per class.

Anyone can register for a trade mark. There are no required qualifications for registering a trade mark.

There is no requirement that an applicant use its trade mark in commerce before the registration is issued.

The BOIP and EUIPO offices evaluate the relative grounds for protection of a trademark by considering existing prior rights that predate the trademark application. This assessment includes not only prior trademarks within the same jurisdiction but also rights of local significance, such as trade name rights. Owners of these prior rights are entitled to challenge a trademark application by presenting various forms of evidence to support their claim.

Opposition Proceedings

Third parties may file an opposition proceeding once the application is published in the registers. The key aspects of the opposition proceeding are outlined below.

Filing opposition

Any party with a legitimate interest has a specified period to file an opposition to the registration of a trade mark. The opposition is submitted to the BOIP/EUIPO. After this, the BOIP/EUIPO will assess the opposition for admissibility. If deemed admissible, the proceedings will face a cooling-off period of two months during which parties may negotiate an amicable settlement. If parties do not reach a settlement, the proceedings continue and the opposing parties may then further substantiate the grounds for their opposition.

Grounds for opposition

Opposition can be based on various grounds, such as the similarity of the trade mark to existing trade marks, likelihood of confusion, lack of distinctiveness, or violation of earlier rights.

Evidence and arguments

The party filing the opposition needs to provide evidence and arguments supporting their case. This may include evidence of prior use of a similar mark, potential confusion in the marketplace, or legal arguments against the registration.

Response from the applicant

The trade mark applicant has the opportunity to respond to the opposition by submitting counterarguments and evidence supporting the registration of the trade mark.

Decision by BOIP/EUIPO

The BOIP/EUIPO examines the opposition, the response, and any supporting evidence before making a decision. This decision may involve rejecting the opposition, partially accepting it, or refusing the trade mark application.

Appeal

Both parties have the right to appeal the decision. If either the applicant or the opponent disagrees with the decision, they can appeal to higher courts within the EU legal system.

During the application process it is possible to revoke, change, amend or correct the trade mark application. This can relate to material alterations, such as the applicable classes or the mark itself. It is important to note, however, that while narrowing the scope of the application is permissible, broadening it is not allowed.

It is possible to divide trade mark applications. This requires an application to divide the application. The application must be filed in writing in accordance with the respective form, which is provided on the website of the BOIP and EUIPO. The administrative fee for division is EUR250.

Providing incorrect information could result in the invalidation of a registration or rejection of an application. However, in practice, if the incorrect information was provided inadvertently, the examiner will provide an opportunity to correct the information. 

Grounds for Trade Mark Registration Refusal

A trade mark registration can be refused based on the following absolute grounds. 

Lack of distinctiveness

A trade mark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. If a mark lacks distinctiveness, it may be refused. To overcome this objection, the applicant could raise market research or other evidence to show that the trade mark is in fact distinctive for the respective services and/or goods contemplated by the application. Also, the applicant may limit or alter the classes for which the application is filed.

Descriptiveness

Similar to other jurisdictions, a trade mark that consists 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 services may be refused. To overcome this objection, the applicant could raise market research or other evidence to show that the trade mark is not descriptive, because it has gained sufficient distinctiveness for the respective services and/or goods. Also, the applicant may limit or alter the classes for which the application is filed.

Generic terms

If a trade mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade, it may be refused. To overcome this objection, the applicant could present market research or other evidence to show that the trade mark is not generic because it has gained sufficient distinctiveness for the respective services and/or goods. Also, the applicant may limit or alter the classes for which the application is filed.

Deceptive marks

Trade marks that are deceptive or likely to deceive the public, particularly concerning the nature, quality, or geographical origin of the goods or services, may be refused. To overcome this objection, the applicant could present market research or other evidence to show that the trade mark is not deceptive, because it has gained sufficient distinctiveness for the respective services and/or goods. Also, the applicant may limit or alter the classes for which the application is filed.

Shape of goods or their packaging

If the shape results from the nature of the goods themselves, is necessary to obtain a technical result, or gives substantial value to the goods, it may be refused registration. To overcome this objection, the applicant could present market research or other evidence to show that the trade mark has gained sufficient distinctiveness for the respective services and/or goods. Also, the applicant may limit or alter the classes for which the application is filed.

Contrary to public policy or to accepted principles of morality

Trade marks that are contrary to public policy or accepted principles of morality may be refused. This objection can be overcome by providing arguments or evidence demonstrating how the trade mark does not contravene these principles.

National emblems, official signs, and hallmarks

The use of national emblems, official signs, or hallmarks indicating control and warranty may be refused. This objection can be overcome by providing arguments or evidence demonstrating that the trade mark does not infringe upon these symbols.

Geographical indications and designations of origin

Trade marks that are identical to or likely to be confused with a registered geographical indication or a protected designation of origin may be refused. This objection can be overcome by providing arguments or evidence demonstrating that the trade mark is not likely to be confused with a registered geographical indication or a protected designation of origin.

The applicant may file for an appeal within two months of the decision. The appeal must be made with the respective office (BOIP or EUIPO). The process depends on whether one or more parties are involved. In case of an inter-partes appeal, both parties will be heard. The appeal will be examined by the board of appeals. The board of appeals will ultimately issue a decision. This decision may be appealed within two months of notification of such decision. The appeal proceedings of this decision will be conducted by the CJEU. 

The Netherlands is a party to the Madrid system. It does not provide for any specific additional requirements aside from holding a valid registration to base the international registration on.

Parties are permitted to file an opposition to a trade mark application within two (BOIP) or three (EUIPO) months of the publication of the trade mark application in the relevant register. There is no extension possible for this deadline. However, note that the filing of an opposition does not immediately require substantiating of the opposition. Upon expiration of the opposition period, the applicant and opposing party enter into a cooling-off period of two months to reach an amicable solution.

Opposition can be based on relative and absolute grounds, such as the similarity of the trade mark to existing trade marks, likelihood of confusion, lack of distinctiveness, or violation of earlier rights. It is also possible to base the opposition on dilution; ie, the “whittling away” of the distinctiveness of a trade mark that does not cause confusion.

Only the opponent that holds a trade mark registration or a licence thereto may file for registration. The opponent does not require representation for the opposition proceeding. 

The opposition procedure is described in 4.8 Consideration of Third-Party Rights in Registration. Unlike in the US legal system, there is no discovery phase in the opposition procedure. It is the responsibility of each party involved in the opposition to present the relevant evidence. As such, the proceedings are ruled in a “closed universe” of evidence. While there can be a hearing as part of the opposition process, it is not a default or mandatory part of the procedure.

The parties can appeal the decision by the respective office within two months of the notification of the decision. The party files the appeal with the board of appeals of the respective office. For more information on appeals, see 4.13 Remedies Against the Trade Mark Office.

There are no statutory limitations or time periods within which to file revocation/cancellation actions in relation to trade marks or copyrights. Nor are there any such limitations or periods for certain arguments in support of a revocation/cancellation.

Revocation, cancellation or re-examination procedures are only available for trade marks, as copyrights are not registerable in the Netherlands.

The grounds for invoking revocation and cancellation, or invalidation, are similar to those in opposition proceedings, with the processes bearing resemblance as well.

Re-examination, on the other hand, is available only through an appeal of an examine’s decision, which is taken to the board of appeals of the respective office. 

Revocation/cancellation may be invoked by a trade mark owner or a licence holder of such trade mark. There is no equivalent for copyrights, since such rights are not registerable in the Netherlands.

Revocation/cancellation actions for trade marks can be brought before both the civil courts and the respective office.

The board of appeals has the authority to issue decisions of partial invalidity in cases where a request for cancellation of a trademark is deemed overly broad. If the respective office, upon review, determines that the grounds for revocation or invalidity are applicable to certain aspects of the trademark but not to others, it can decide to invalidate the trademark only partially.

Amendment of the trade mark registration during the cancellation proceedings is not possible, since it is not possible to make material changes after registration of the trade mark.

Combining actions involving revocation/cancellation and infringement is only possible in cases heard before the civil courts. However, if the proceedings are initiated before the respective trade mark offices, it is not possible to bring a claim for infringement. In terms of timing, if the infringement and cancellation are handled in two different proceedings, the civil court may decide to stay a decision on infringement until the respective trade mark office has made a decision on the cancellation. However, the civil courts are under no strict obligation to do so.

The BOIP and EUIPO consider the filing of a trade mark application in bad faith (eg, fraudulently to thwart a competitor) as an absolute ground for invalidation. As a result, it is part of the initial assessment by the examiners of the respective offices. The investigation into a possible bad faith application will not formally suspend the application, but it is likely to prolong the application process. However, if the trade mark application makes it to registration, the cancellation must be requested by a third party (ie, not the office itself). If the applicant is found to have filed a trade mark application in bad faith, this will lead to the rejection of the application or the invalidation of the registration.        

Both trade marks and copyrights can be fully or partially assigned. The procedures for assignment of a trade mark are different from a copyright, since copyrights are non-registerable intellectual property rights in the Netherlands.

For trade marks, the assignment requires a written agreement. This written agreement must stipulate the assigned rights and indicate the trade mark(s) this pertains to. The assignment agreement must be filed with the respective trade mark office in order to have a third-party effect; ie, if the assignment agreement is not filed, the assignment applies only between the parties to the assignment agreement and cannot be invoked against third parties. The respective trade mark office will examine the assignment agreement, and, if approved, record this assignment in the publicly available register.

For copyrights, the assignment agreement alone is sufficient, also for third-party effect. Since copyrights are non-registerable rights, it is particularly important to be as precise as possible about the subject matter assigned. If this cannot be determined with sufficient precision, then the assignment will not be valid.

Both trade mark and copyrights are transmissible upon death.

The procedures of licensing trade marks or copyrights are virtually the same as for assigning the rights thereto, as described in 7.1 Assignment Requirements and Restrictions. There are various possible licenses that can be granted. Parties are free to decide on this; eg, it is possible to enter into an exclusive licence, non-exclusive licence, sole licence, perpetual licence, or time-restricted licence. Licences can include archival rights as well.

It is possible to assign an application for a trade mark, or grant a licence in relation to it during the application process, and no specific restrictions apply.

The assignments and licences must be recorded with the respective trade mark office. If this is not carried out, the assignment or grant of licence does not have third-party effect, as explained in 7.1 Assignment Requirements and Restrictions. If there is a gap in time between the assignment or licence taking place and its recordation, this will not thwart the recordation, but the date of recordation will apply for purposes of third-party effect.

Authors and/or heirs cannot recapture their rights after permanent transfer thereof. However, the moral rights will remain with them even after transfer.

Trade marks and copyrights can be given as a security, lien, subject to rights in rem, or otherwise levied in an execution. For trade marks, such security must be recorded with the respective trade mark office. The pledge to support this recordation must be provided, unless it is submitted by the rights-holder. Copyrights are non-registerable. However, for copyrights it is still relevant that the subject matter is defined with sufficient precision, so that it is clear what the scope of the lien is.

Claims of infringement must be brought within 20 years from the moment when they are first discovered. This statute of limitations will be renewed every time the infringer is notified of its infringement (ie, when the rights-holder asks the infringer to cease the infringement).

IPRED Enforcement Options

The legal claims available to trade mark owners and copyright holders are harmonised under the IPRED. Below are the key enforcement options outlined in the IPRED.

Injunctions (Article 9)

Rights-holders can seek injunctions to prevent any imminent infringement of their intellectual property rights.

Damages (Article 13)

The injured party has the right to claim damages for the actual loss suffered due to the infringement, as well as any profits that the infringer gained.

Corrective measures (Article 12)

Courts may order corrective measures, such as recall, destruction, or other similar actions, in relation to the infringing goods.

Publication of judgments (Article 15)

Court decisions, including judgments on the merits of a case, are published in order to enhance transparency and deter future infringements.

Preservation of evidence (Article 7)

Rights holders can request measures to preserve evidence relevant to the alleged infringement.

Information (Article 6)

Courts may order the disclosure of information necessary to identify the infringer and gather evidence.

Provisional and precautionary measures (Article 11)

Courts may grant provisional and precautionary measures to prevent an imminent infringement or to preserve relevant evidence.

Costs of enforcement (Article 14)

Courts can and most often will order the losing party to pay the reasonable and proportionate legal costs and other expenses incurred by the successful party. Note that these costs are substantially higher in comparison to losing a case in regular proceedings, but the Netherlands has maximised these costs contingent upon the difficulty of the case.

Trade Mark and Copyright Infringement

For trade mark infringement, the rights-holder must prove that there is either (i) use of an identical mark for identical goods or services; (ii) use of a confusingly similar mark for confusingly similar goods or services; or (iii) use of an identical or similar mark for different goods or services, but where the mark takes an unfair advantage of the reputation of the invoked trade mark.

For copyright infringement, the rights-holder must prove: (i) that they hold the rights (eg, in case of prior assignment, the chain of title); (2) the scope of the copyright protection; and (3) the infringement thereof by the other party.

In the context of Dutch and EU legal frameworks, the nuanced categories of infringement common in other jurisdictions, such as direct, contributory, or vicarious infringement, do not have direct equivalents. Instead, an action is simply classified as either constituting infringement or not.

These factors are briefly described in 8.2 Legal Claims for Infringement Lawsuits and Their Standards. For trade marks, these factors are established by statute. Where it concerns copyright infringement, the factors have been formed by case law.

The necessary parties for trade mark and/or copyright infringement are the rights-holder and the (alleged) infringer. However, it is also possible for a third party, such as the licence holder to initiate an action for infringement. Trade mark owners cannot invoke an application for a trade mark, since no rights have been granted before the registration is recorded. It is not possible for third parties to join copyright or trade mark infringement actions after they have commenced.

The Netherlands allows for representative or collective actions for trade mark or copyright proceedings. There must be a clear power of attorney in place to initiate an action on behalf of the represented parties.

While it is not formally required by law to issue a demand letter, warning letter or other type of notice before filing the lawsuit, it is against the disciplinary guidelines for Dutch attorneys as set out by the bar to do so. Unfounded claims or abuse of law are subject to tort liability. 

In principle, but subject to forum rules, all civil courts can hear trade mark or copyright claims. The costs that typically arise before filing a trade mark or copyright lawsuit will relate to advice, warning letters, collecting evidence, and negotiating with the (alleged) infringer. Parties need to be represented by an attorney in order to litigate a trade mark or copyright lawsuit. There are no restrictions as to the nationality or country of residence of the trade mark owner or copyright holder in bringing an infringement claim in the Netherlands.

The pleading standards for a trade mark or copyright lawsuit do not differ from other lawsuits. However, the claim must clearly articulate the specific infringing behaviour. After filing the claim, it is possible to bring supplemental arguments during the court hearing or on request and with approval by the other party and the court. A defendant can make a counterclaim in the same proceeding or initiate a separate lawsuit.        

An alleged trade mark or copyright owner may start declaratory judgment proceedings. There are no restrictions on the circumstances for this. A potential defendant should ensure it has enough evidence to support its claim to the trade mark or copyrights.

Claims under EUR25,000 are heard by small claims courts (kantonrechter).

The civil courts are bound by the decisions of the respective trade mark office.

Counterfeit marks are treated as a trade mark infringement, while copyright counterfeiting is treated as a copyright infringement. There are special procedures for counterfeiting and are dealt with by customs authorities pursuant to Regulation (EU) 608/2013 concerning customs enforcement of intellectual property rights (IPR).

Bootlegging is not specifically defined in legislation or case law, and is typically treated in the same manner as regular copyright infringement.

Trade mark and copyright proceedings follow the regular procedural rules as set out by the Dutch Code of Civil Procedure. These cases are not determined by technical judges and sometimes not even by a judge with expertise in intellectual property rights. The parties only have an influence on the decision-maker when they decide to engage in arbitration. Another Dutch alternative is the Netherlands Commercial Court, which does have specific expertise in intellectual property rights. However, this court is generally more expensive and must be chosen by mutual agreement.

The trade mark registration owner is presumed to hold the rights thereto. However, in case of copyrights, this must be proven by the party asserting such rights. Whether the alleged infringer must be using a mark for the same goods and services as those listed in the registration is contingent on the claim for infringement as explained in more detail in 8.2 Legal Claims for Infringement Lawsuits and Their Standards.

The Dutch legal system generally does not allow for discovery. As a result, the parties are each responsible for submitting the evidence relevant to support their claim and position insofar as the burden of proof rests on them to provide such evidence.

Expert witnesses and/or surveys are allowed for trade mark and copyright infringement actions in the Netherlands. Expert witnesses and surveys are not used in every case but will play a material part if they are used. Courts will assess the trustworthiness of these types of evidence. If deemed trustworthy, they will often play a decisive role in the outcome of the case.

The typical cost of bringing a trade mark or copyright infringement action to conclusion in first instance are EUR40,000-50,000. Factors such as extensive negotiations with the counterparty, the size of the infringement, the legal complexity of the case, and the amount of evidence can impact the expected costs.

Criminal liability for trade mark or copyright infringement is possible under Dutch law. Both are covered by the Dutch Penal Code. Penalties may include fines and imprisonment, and the severity of the penalties can vary based on factors such as the commercial scale of infringement.

As defences against trade mark infringement, defendants can claim:

• that they are using their own name and/or address in the allegedly infringing mark in trade;
• that the signs or indications are not distinctive or concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services;
• that the trade mark is used for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts;
• that the use is in relation to goods that have been put on the market in the European Economic Area under that trade mark by the proprietor or with his or her consent; or
• that the mark they are using applies to an earlier trade name right, which overrides the later registered trade mark. 

Limitations of Copyright Protection

The limitations of copyright protection are set out below.

Duration of copyright protection

Copyright protection is time-limited. In the Netherlands, as in many other jurisdictions, the duration of copyright protection is finite. Typically, it lasts for the lifetime of the author plus a certain number of years (70 years in the EU).

Limited fair use and exceptions

The Netherlands has limited limitations and exceptions to copyright known as “fair use” or “fair dealing”. These exceptions allow for the use of copyrighted material for purposes such as criticism, review, use by handicapped people, use in artworks, news reporting, education, research, and parody. When analysing the use of copyrighted material for parody, several factors are considered:

• The essential characteristics of parody must be present, namely the imitation of an existing work with noticeable differences, coupled with elements of humour or mockery.
• There is no requirement for a parody itself to be a work protected under copyright law.
• The parody does not need to be about the work it imitates or its creator.
• There is no obligation to mention the source of the original work in the parody.

Finally, a just balance must be struck between copyright and freedom of expression, based on the circumstances of the case.

Public domain

Works in the public domain are not protected by copyright. In the Netherlands, works may enter the public domain if the copyright has expired, if the author has explicitly waived their rights, or if the work was never eligible for copyright protection.

Private copying

Some jurisdictions allow for private copying of copyrighted material for personal use. In the Netherlands, there are provisions for private copying, and a private copying levy may be applied to certain media and devices.

Quotation right

The Dutch copyright law includes a provision for “quotation rights”, allowing the use of short excerpts from copyrighted works for purposes such as criticism or review, as long as proper attribution is given.

Educational use

There are exceptions for the use of copyrighted material in an educational context, allowing for certain uses of copyrighted material for educational purposes.

Orphan works

Orphan works are works whose copyright owner cannot be identified or located. Some jurisdictions have provisions that allow for the use of orphan works under certain conditions.

Government works

Works created by the Dutch government or public authorities may not be eligible for copyright protection or may have limited protection.

Unlike the “fair use” doctrine found in some legal systems, Dutch and EU copyright laws operate under a closed list of exceptions. This means that factors allowing the use of copyrighted works without permission are narrowly defined by EU legislation and implemented by Dutch law. This approach provides clear guidelines but raises questions about the relationship between copyright restrictions and fundamental rights like free speech. Moving forward, case law will be key in defining the boundaries between copyright protection and free expression.

The Netherlands provides an exception for private copying of copyright-protected works. The EU legislature determined that copying of such works for personal use is allowed and no additional remuneration to the rights-holder is necessary, since this fee is expected to be incorporated in the price upon purchase of the work that is copied under this exception. 

Under the DSA, intermediaries are exempt from liability for the following three activities:

• mere conduit services; ie, transmitting messages or information to certain recipients or providing access to a service;
• caching services; ie, involving the automatic, intermediate and temporary storage of that information, performed for the sole purpose of making more efficient the information’s onward transmission to other recipients upon their request; and
• hosting without any active monitoring.

A trade mark is exhausted when products containing the trade mark are first put on the market within the European Economic Area and with the consent of the trade mark owner, unless there are legitimate reasons to object to the use after exhaustion (for instance, when conditions of the products have changed or are impaired).

The further selling of a copyright-protected work after the first sale on the market within the European Economic Area and with the consent of the copyright holder will also lead to exhaustion of the copyright holder’s rights to that copy. This also applies to e-Books and software licences without a limitation in time. However, this does not apply to the renting or loaning of such a copy.

There is a limitation on the rights to reproduce and distribute copyright-protected works with respect to qualified libraries and archives. This also extends to certain digital works. However, such works can only be consulted through a terminal at the physical location of the library or archive.

Trade mark or copyrights owners can start preliminary proceedings to request injunctive relief. Such injunctive relief can include an interlocutory injunction, product recall, further information on the infringement, such as other selling parties and the number of products sold. In addition, it is also possible to request a precautionary seizure. The court must decide whether the claim is likely to succeed in the substantive proceedings. If so, the court has a reasonable discretion to grant the preliminary relief as requested. The Netherlands does not require a bond to obtain an injunction. However, if the injunction is later overruled in appeal or proceedings on the merits, the defendant could claim damages as a result of this injunction.

Trade mark or copyright owners may be compensated for lost profits. The court may decide to calculate this amount based on the size of the infringement. However, it may also decide to set the damages as a lump sum on the basis of elements such as the amount of royalties or fees that would have been due if the infringer had requested authorisation to use the trade mark or copyright.

There are no specific rules or restrictions on the type and/or amount of damages awarded, as this is highly contingent on the facts and background of the case. No distinction is made as to whether or not the intellectual property rights are registered.

The losing party will generally be required to pay the cost of litigation for trade mark and copyright claims, including court fees, expenses, and attorneys’ fees. This also includes the reimbursement of the prevailing party’s attorney’s fees up to an amount determined by the judge based on the predetermined “indicated tariffs” (Indicatietarieven) depending on the complexity of the relevant case.

It is not possible for a trade mark or copyright owner to seek relief without notice to the defendant.

Customs Procedures

In the EU, including the Netherlands, customs procedures for the seizure of counterfeits and parallel imports are governed by EU regulations. The primary regulation in this regard is Regulation (EU) No 608/2013 concerning customs enforcement of intellectual property rights.

Under this regulation, intellectual property rights (IPR) holders, including trade mark and copyright owners, can take advantage of customs procedures to protect their rights. The process typically involves the following steps:

Application for Action (AFA)

The trade mark or copyright owner must submit an AFA to the customs authorities in the EU member state(s) where they seek protection. This application provides details about the intellectual property rights, including relevant trade marks or copyrights, and describes the genuine products.

Customs monitoring

Once the application is accepted, customs authorities will monitor incoming and outgoing shipments for potential infringements. This includes goods in transit through the EU.

Notification of suspected goods

If customs officials suspect that goods entering or leaving the EU infringe intellectual property rights, they shall notify the rights-holder and provide an opportunity to confirm whether the goods are counterfeit or unauthorised parallel imports.

Detention and seizure

If the rights-holder confirms the infringement, customs officials can detain or seize the goods. In some cases, the rights-holder may be required to initiate legal proceedings to determine the infringement.

It is important to note that these procedures are generally cost-effective and efficient for rights-holders. However, the rights-holder must actively pursue enforcement by co-operating with customs authorities and, if necessary, initiating legal actions.

Trade mark or copyright defendants have the opportunity to settle the case when they first receive a cease-and-desist letter, or other type of warning letter. Once litigation is initiated the parties can enter into a settlement until the moment that a decision is rendered by the court. The court does not mandate formal mechanisms for settling the cases. However, the court will almost always ask the parties to consult on the possibility of negotiating a settlement, often during the court hearing.

The Dutch court system does not mandate alternative dispute resolution for trade mark or copyright infringement actions. Available alternative dispute resolution methods are mediation, (binding) arbitration, or the Netherlands Commercial Court.

Other court proceedings, such as parallel, revocation, or infringement proceedings may impact the current proceedings. For instance, the outcome of a revocation proceeding can influence the question of whether there is infringement. Oftentimes, the court will be aware of such potential influence on the case and decide to stay the case if necessary.

An appeal for trade mark or copyright infringement decisions is possible. These procedures follow the regular proceedings before the civil courts as set out by the Dutch Code of Civil Procedure.

An appeal from a trial court decision must be filed with the appellate court within three months of this decision. For an appeal to be decided, the typical timeframe is between 9-12 months.

There are no special provisions concerning the appellate procedure for trade mark or copyright proceedings.

An appeal consists of a full review of the facts of the case.

Typically, such issues are dealt with through portrait rights, which are contained in Article 21 of the Copyright Act. These rights aim to protect individuals from unauthorised commercial exploitation of their identity.

In the context of trade marks and copyrights, unfair competition laws may come into play when someone engages in activities that mislead consumers or undermine the legitimate interests of trade mark or copyright owners. For example, actions such as counterfeiting, trade mark infringement, or copyright infringement may be addressed under both intellectual property laws and unfair competition laws. Examples of laws that may (indirectly) affect trade marks or copyrights are the Dutch Competition Law (Mededingingswet), and the Regulation (EU) 2022/1925 (“Digital Markets Act”). 

The emergence of artificial intelligence is still under scrutiny from legislators in the Netherlands as well as in the EU. The upcoming EU Artificial Intelligence Act will be the first official attempt to regulate new technologies such as generative AI. As of now, there has been considerable speculation and theoretical exploration in legal and academic literature regarding AI, but a lack of established case law in this area means there is still uncertainty about how various legal issues related to AI will be resolved.

The rules on the use of copyrights and trade marks on the internet are partially described in 10.4 Intermediaries. However, the rules on such uses are rapidly expanding with the upcoming EU Artificial Intelligence Act, Data Act, and other legislative initiatives.

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