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A Dutch trademark attorney is the lawyer to instruct when a foreign company must defend its brand in the Netherlands, against a copycat or against a claim. As a Dutch lawyer at MAAK Advocaten in Amsterdam, I act for companies in IP disputes before Dutch courts, from the first letter through to appeal.
My practice areas and publications are on my profile: Arnout Gieske, Dutch intellectual property lawyer. For the rights themselves, see intellectual property law in the Netherlands.
Which trademark is easier to defend in the Netherlands: Benelux or EU?
It depends on where you sell and what you can prove. A Benelux trademark, filed with the BOIP, covers the three Benelux countries; an EU trademark covers the Union. Both arise through registration (Art. 2.2 BCIP; Art. 6 EUTMR).
The Benelux Office for Intellectual Property (BOIP) registers Benelux marks under the Benelux Convention on Intellectual Property (Benelux-verdrag inzake de intellectuele eigendom, BCIP). The European Union Intellectual Property Office (EUIPO) registers EU trademarks, which have unitary character: equal effect throughout the Union, and registration, transfer, revocation or invalidity only for the whole Union (Art. 1(2) EUTMR). That is a strength and a risk: one successful attack reaches every member state.
Both rights carry a use obligation. A mark not put to genuine use within five years of registration, or unused for five years, can be revoked unless there are proper reasons for non-use (Art. 2.23bis and 2.27(2) BCIP; Art. 18(1) and 58(1)(a) EUTMR). A trademark is worth what its goods and services list and your actual use support.
Which route fits your market is a judgment call. I look at it from the dispute side: where would someone attack this mark, and where would you need to enforce it? Filing formalities I leave out. Note that a company without a seat or establishment in the EEA must be represented before the EUIPO in all proceedings except the filing itself, by an EEA lawyer entitled to act in trademark matters or a representative on the EUIPO list (Art. 119(2) and 120(1) EUTMR).
Important: Your Dutch agent or representative files your mark in its own name. As proprietor you can oppose an EU application (Art. 8(3) and 46(1)(b) EUTMR) and demand assignment of the registration (Art. 21); the BCIP has a parallel ground (Art. 2.2ter(3)(b)). Whether a distributor counts as agent or representative depends on the facts. Have a Dutch trademark lawyer assess your position and evidence before you end the relationship.
What can you do when someone uses your trademark in the Netherlands?
If the sign is identical or confusingly similar to your registered mark, you can demand that the use stops and ask a Dutch court for an injunction (Art. 2.20(2) BCIP; Art. 9(2) EUTMR).
You cannot invoke trademark protection in court for a sign that qualifies as a trademark unless you rely on a registration, except for a well-known mark within the meaning of Article 6bis of the Paris Convention (Art. 2.19(1) BCIP).
The right covers three main situations: an identical sign for identical goods or services; an identical or similar sign for identical or similar goods where the public is likely to be confused; and, for a mark with a reputation, use that takes unfair advantage of its distinctive character or reputation or harms it (Art. 2.20(2)(a) to (c) BCIP; Art. 9(2)(a) to (c) EUTMR). The harmonising Directive has the same wording (Art. 10(2) Directive (EU) 2015/2436). Infringement and defences are explained in our article on a trademark dispute in the Netherlands.
You can do part of the groundwork yourself: record the use with dated screenshots and test purchases, and check that your registrations cover the goods concerned.
A Dutch court can stop use quickly in summary proceedings (kort geding), available in all urgent cases (Art. 254(1) Rv). In urgent IP cases the preliminary relief judge may order, without summoning the alleged infringer, that an imminent infringement be prevented (Art. 1019e(1) Rv). The losing party can be ordered, on request, to pay reasonable and proportionate legal costs, unless fairness opposes (Art. 1019h Rv). A weak claim can therefore cost you the other side’s costs.
Is a Dutch business using your brand and are you unsure whether to write or to sue? Send me your registration certificates and what you have found. I will tell you which route fits and what to secure first, via my profile: Arnout Gieske, Dutch intellectual property lawyer.
Which Dutch court decides a trademark dispute?
Unless agreed otherwise, a Benelux case follows the defendant’s domicile or the place where the obligation arose or is performed, with a fallback for foreign plaintiffs (Art. 4.6 BCIP). EU trademark claims go to The Hague (Art. 3 Dutch Community trademark act).
For EU trademarks, EU trademark courts have exclusive jurisdiction over infringement and revocation counterclaims (Art. 124 EUTMR). The defendant’s domicile or establishment decides first (Art. 125(1) to (3)). You may also sue where the infringement happened, but then only for acts in that state (Art. 125(5) and 126(2)).
The Hague is exclusive in the first instance; in summary proceedings the judge competent under Art. 4.6 BCIP decides. That act (Uitvoeringswet E.G.-verordening inzake het Gemeenschapsmerk) still refers to the original Community trademark regulation. In most cases you cannot litigate in person: outside cases before the cantonal judge, parties act through a lawyer (Art. 79(2) Rv).
Expect a counterclaim. An EU trademark court treats the mark as valid unless the defendant puts validity in issue by counterclaim, and can also plead revocation for lack of genuine use (Art. 127(1) and (3), 128 EUTMR). In the Benelux, any interested party can invoke revocation (Art. 2.28(4) BCIP).
Important: Your Dutch counterpart answers your summons with a counterclaim: your mark was not used for the goods concerned. Revocation for non-use can cost you the right for those goods (Art. 58(1)(a) EUTMR; Art. 2.27(2) BCIP). Have a Dutch trademark lawyer check your proof of use before you send a cease-and-desist letter, not after the reply arrives.
What do you do when a conflicting trademark or claim reaches you?
Check the other side’s earlier right, its priority date and its use before you reply. To stop a conflicting application, the window is short: two months from publication at the BOIP, three at the EUIPO (Art. 2.14(1) BCIP; Art. 46(1) EUTMR).
An opposition is an administrative procedure before the office, not a court case. It rests on an earlier mark that is identical, or similar with a likelihood of confusion (Art. 2.2ter(1) BCIP; Art. 8(1) EUTMR). Whether to oppose, negotiate or defend depends on priority dates, goods lists, actual use and the commercial relationship. Non-use can serve as a shield: in an EUIPO opposition the applicant can ask the opponent to prove genuine use of an earlier mark registered for five years or more, and without proof the opposition is rejected (Art. 47(2) EUTMR).
An illustration, hypothetical: a US apparel brand sells to Dutch retailers under a name it never registered, and a Dutch company files the same name as an EU trademark. Without a registration it cannot invoke trademark protection for the name in a Dutch court (Art. 2.19(1) BCIP). It may still oppose if it holds an unregistered mark or another sign of more than mere local significance and the conditions of Art. 8(4) EUTMR are met, within the opposition period.
Important: A letter from a Dutch law firm says your product name infringes a Benelux trademark and sets a short deadline to sign an undertaking. Signing can bind you to stop using the name, whatever the merits; the claim rests on Art. 2.20(2) BCIP. Have a Dutch trademark lawyer check the earlier right and its use before you sign or reply.
Which trademark situations call for legal action in the Netherlands?
Those where a time limit runs or a court will decide: infringement, a revocation counterclaim, a published conflicting application, a letter or summons. In court most parties must use a lawyer (Art. 79(2) Rv).
| Your situation | What is at stake | Why a Dutch lawyer | What I do first |
|---|---|---|---|
| A Dutch business sells goods under a sign like your registered mark | Prohibition of the use (Art. 2.20(2) BCIP; Art. 9(2) EUTMR) and a costs risk (Art. 1019h Rv) | Whether the sign is similar enough, and what the other side will attack, is a legal assessment; a court case needs a lawyer (Art. 79(2) Rv) | Review registrations, goods list and evidence, then choose between a letter, summary proceedings and proceedings on the merits |
| Your counterpart answers with a revocation counterclaim | Revocation for non-use (Art. 58(1)(a) EUTMR; Art. 2.27(2) BCIP) | Validity is decided in the same case, and proof of use has to match the registered goods (Art. 127, 128 EUTMR) | Check your proof of use before any letter goes out |
| A conflicting application is published | An opposition window of two months (BOIP) or three months (EUIPO) | The window is fixed in the text and the outcome rests on earlier rights and proof of use (Art. 8(1), 47(2) EUTMR) | Review your registrations and evidence and map the time limits; I act where the matter goes to a Dutch court |
| Your Dutch agent or distributor registers your mark | Ownership of the registration (Art. 8(3), 21 EUTMR; Art. 2.2ter(3)(b) BCIP) | Whether the agent provisions apply depends on the facts | Review your registrations and the evidence of ownership; I act where it becomes a dispute before a Dutch court |
| You receive a letter or a summons | An undertaking you may sign or an injunction claim (Art. 2.20(2) BCIP), and costs (Art. 1019h Rv) | Time limits and the choice of defence; summary proceedings can be fast (Art. 254(1) Rv) | Secure the time limits, check the other side’s right and use, then advise on the reply |
How do I work on a trademark case?
I work in stages: assessing your registrations and evidence, securing evidence and time limits, negotiating or sending a cease-and-desist letter, and litigating in summary proceedings, on the merits and on appeal.
At MAAK Advocaten in Amsterdam I review in the first days your registrations and evidence, check the running time limits, and decide whether an order without summoning the other side (Art. 1019e Rv) is needed. For foreign clients we work in English. I have been a lawyer since 2006 and have registered civil procedural law and intellectual property law as my practice areas with the Netherlands Bar. I am a member of VIEPA, the Dutch association of IP litigation lawyers, and I have written about trademark law in Dutch legal journals. For the registration side, see our article on how to protect your trademark in the Netherlands.
Frequently asked questions about trademarks in the Netherlands
Do I need a Dutch trademark lawyer to enforce my trademark in the Netherlands?
In most cases, yes. Outside cases before the cantonal judge, parties cannot litigate in person but only through a lawyer (Art. 79(2) Rv). A trademark claim before a district court therefore needs a Dutch lawyer. A letter to the infringer does not require one.
Is a Benelux or an EU trademark better for the Dutch market?
An EU trademark covers the whole Union and is registered, transferred or revoked only for the whole Union (Art. 1(2) EUTMR). A Benelux trademark covers Belgium, the Netherlands and Luxembourg. Both depend on genuine use within five years of registration. The better fit depends on where you sell and for which goods.
Can I stop a Dutch company from registering my brand?
You can oppose its application within two months of publication at the BOIP or three months at the EUIPO (Art. 2.14(1) BCIP; Art. 46(1) EUTMR). You need an earlier right: a registered mark or, for an EU application, an unregistered sign of more than mere local significance (Art. 8(4) EUTMR).
Which Dutch court hears an EU trademark case?
The District Court of The Hague is exclusively competent in the first instance; in summary proceedings the judge competent under Art. 4.6 BCIP decides (Art. 3 Dutch Community trademark act). Jurisdiction based on the defendant’s domicile covers infringement across the Union, jurisdiction based on the place of infringement only acts in the Netherlands (Art. 125, 126 EUTMR).
What happens if I do not use my trademark?
After five years without genuine use and without proper reasons, the mark can be revoked, also by counterclaim (Art. 58(1)(a) EUTMR; Art. 2.27(2) and 2.28(4) BCIP). Use begun in the three months before the claim does not count if the preparations only started after the owner learned a claim might follow (Art. 2.27(3) BCIP).
When should I contact a Dutch trademark lawyer?
Before you write to the infringer, before you sign an undertaking or answer a claim, and while an opposition period is running. At MAAK Advocaten in Amsterdam I first check your registrations, your proof of use and the running time limits. Then I advise on a letter, summary proceedings or proceedings on the merits.
Legal framework and sources
- Regulation (EU) 2017/1001 on the European Union trade mark (EUTMR), CELEX 32017R1001, OJ L 154, 16.6.2017: Art. 1, 6, 8, 9, 18, 21, 46, 47, 58, 119, 120, 124 to 128
- Directive (EU) 2015/2436 on trade marks, CELEX 32015L2436, OJ L 336, 23.12.2015: Art. 10
- Benelux Convention on Intellectual Property (trademarks and designs) (BCIP): Art. 2.2, 2.2ter, 2.14, 2.19, 2.20, 2.23bis, 2.27, 2.28, 4.6
- Dutch Code of Civil Procedure (Rv): Art. 79, 254, 1019e, 1019h
- Uitvoeringswet E.G.-verordening inzake het Gemeenschapsmerk (Dutch act implementing the Community trademark regulation): Art. 3
Does a Dutch company use or claim your brand, and is a time limit running? Send me your registrations and what you have received. I will tell you where you stand and what I would do first. Contact me via my profile: Arnout Gieske, Dutch intellectual property lawyer. — Arnout Gieske
