A trademark dispute in the Netherlands requires immediate and strategic action. You can take legal steps when a competitor infringes your trademark rights by using an identical or confusingly similar sign for similar products or services. Well-known marks enjoy extended protection under Article 2.20 paragraph 1c of the Benelux Convention on Intellectual Property (BCIP), even beyond their own product category. Our Dutch IP-lawyer for trademark law and Trade Name Law in the Netherlands shall explain the most important aspects
In the Netherlands, a trademark dispute typically arises when another business uses a sign that bears strong similarities to your registered trademark. Under trademark law, the trademark holder can take action if there is a likelihood of confusion among the public due to similarity of conflicting marks. This protection applies particularly when the goods or services of both marks are identical or comparable. Entrepreneurs can initiate legal proceedings as soon as they identify trademark infringement, where immediate action is essential for effective legal protection.
According to Dutch law, trademark protection extends to registered marks filed with the Benelux Office for Intellectual Property (BOIP) or the European Union Intellectual Property Office (EUIPO). A registered trademark grants exclusive rights for ten years, renewable indefinitely. Without registration, formal legal protection against copying or imitation is absent. Furthermore, approximately 85% of successful trademark infringement cases utilize evidence such as screenshots, invoices, and commercial use of the conflicting trademark.
What Constitutes Trademark Infringement Under Dutch Law?
Trademark infringement in the Netherlands occurs when a third party uses your trademark or a confusingly similar sign without authorization for identical or similar products or services. The degree of similarity between the marks determines whether infringement exists. Courts assess this based on visual, phonetic, and conceptual similarities.
Well-known marks receive enhanced protection under Dutch trademark law. A well-known mark can take action against use for different products or services, for example when unfair advantage is taken of the distinctive character or reputation of the mark. This protection applies even without likelihood of confusion. Additionally, 85% of successful trademark infringement cases use evidence such as screenshots, invoices, and commercial use of the conflicting mark.
Trademark infringement manifests in various forms. A competitor may copy your logo, register your trade name as a trademark, or use a similar mark in online advertising. Moreover, infringement can also occur through use of a comparable sign in metadata, social media, or other digital channels. The judge assesses all relevant circumstances, whereby the distinctive character and reputation of the earlier mark carry significant weight.
How Do I Establish Trademark Infringement in the Netherlands?
Document thoroughly all forms of infringement by taking screenshots of websites, social media, advertisements, and product photos, accompanied by timestamps and metadata. Collect invoices, packaging materials, and other physical evidence on which the infringing sign is visible. This evidence forms the basis for legal action.
Start by systematically recording the unlawful trademark use. Make detailed screenshots of webshops, social media accounts, and online advertisements where the conflicting mark appears. Document the date, time, and URL of each observation. For physical products, purchase sample items where possible and retain receipts and packaging as evidence.
Gather additional evidence demonstrating the scope of the infringement. Investigate how many products the competitor sells under the infringing mark, which sales channels are used, and what turnover is generated. Case law shows that evidence of actual use worldwide provides an indication of how the applied mark may be used in the Netherlands. Especially when the infringer operates a website accessible to Dutch consumers, this weighs heavily in legal proceedings.
Consult the register of the Benelux Office for Intellectual Property to verify the exact registration details of your mark. Check whether the competitor has their own trademark registration that potentially conflicts with your rights. This information determines your legal position and the legal strategy for further steps.
What Burden of Proof Rests on the Trademark Holder According to Dutch Legislation?
The trademark holder in principle bears the burden of proof that the use of the junior mark takes unfair advantage of the senior mark. However, actual trademark infringement need not be demonstrated. Foreseeability of taking advantage suffices for a successful claim.
The court expects logical conclusions based on a probability analysis, taking into account usual practices in the relevant commercial sector. For marks with an exceptionally high reputation, the non-hypothetical chance of taking advantage can be so obvious that no other factual element needs to be presented. For example, courts have ruled that boxes and bottles of imitation perfumes used for advertising purposes provide unfair advantage to the producer.
When you initiate a dispute, you must present elements demonstrating a serious risk that trademark infringement will occur in the future. Specifically, this means that evidence of commercial use of the conflicting mark, even outside the Netherlands, can be considered. The EU General Court has determined that actual use of a mark with a special presentation outside the European Union, unless proven otherwise, can lead to the conclusion that a serious risk exists for identical use within the Netherlands.
Trademark use online generally suffices to establish infringement. Therefore, collecting digital evidence from websites, webshops, and social media where the conflicting mark is used is essential. This documentation significantly strengthens your legal position and increases the likelihood of success in legal proceedings.
What Are the First Legal Steps Under Dutch Law?
Send first a formal cease and desist letter to the infringer identifying the unlawful trademark use and setting a deadline for cessation. This letter should contain a clear deadline, typically between 14 and 21 days, within which the opposing party must cease use. Moreover, state the consequences of non-compliance, such as initiating summary proceedings or full proceedings.
The cease and desist letter also functions as official proof that you actively oppose the infringement. This is legally relevant, as acquiescence can occur when you fail to act against known trademark use by another business for longer than five years. Namely, if you consciously show tolerance for five years, you may no longer prohibit this use. Therefore, swift action after identifying trademark infringement is crucial for maintaining your trademark rights.
Subsequently, consider engaging legal assistance for drafting the cease and desist letter. A lawyer specializing in trademark law can analyze the legal position and advise on the most effective strategy. Approximately 60% of trademark disputes are settled amicably after a professionally drafted cease and desist letter, thereby avoiding costly proceedings.
If the opposing party does not respond adequately or continues the trademark use, you can proceed to filing summary proceedings with the preliminary relief judge. This expedited procedure delivers a judgment within several weeks and provides swift legal protection. For protracted disputes, initiate full proceedings at the District Court, where the dispute is assessed extensively.
How Does an Opposition Procedure Work in Dutch Law?
An opposition procedure starts when you object to the registration of a new mark that conflicts with your registered trademark rights. You must file a reasoned opposition with the Benelux Office for Intellectual Property within three months after publication of the trademark application. This deadline is fatal, making timely action essential.
Opposing a trademark registration requires careful argumentation. You must demonstrate that the applied mark creates confusion with your earlier mark, or that it unfairly benefits from your trademark reputation. The degree of recognition and distinctive character of your mark plays a crucial role. The greater the distinctive character and recognition, the easier a successful opposition can be established.
During the opposition procedure, the BOIP examines the similarities between both marks and the relatedness of the goods or services. A global assessment of all relevant circumstances determines the outcome. For example, courts have ruled that the sign ‘Cambrima’ infringes the mark ‘Campina’, as both were used for dairy products and show strong visual and phonetic similarities.
If the opposition succeeds, the trademark registration is refused or cancelled. Upon rejection of your opposition, you can file an appeal with the Benelux Court of Justice within two months. Approximately 40% of oppositions result in a settlement between parties, often through a settlement agreement containing arrangements regarding trademark use and territorial limitations.
Which Legal Remedies Are Available Under Dutch Law?
You can institute various claims at court to enforce your trademark rights. First, you can demand that the infringer cease and desist use of the conflicting mark. Additionally, you can claim compensation for damages suffered through trademark infringement, although this damage must be legally substantiated. The court does not always order full compensation, making careful calculation and substantiation necessary.
Moreover, you can demand that all products bearing the prohibited sign be delivered to you or destroyed. This measure prevents further distribution of infringing goods. You can also claim that the infringer surrender the profit generated through unlawful trademark use to you. This profit surrender constitutes an alternative to damages and can be financially more attractive.
In urgent situations, you can initiate summary proceedings for a preliminary injunction. The preliminary relief judge can impose a cessation order within several weeks, often subject to a penalty of several thousand euros per violation. Additionally, you can have infringing products seized through a bailiff, immediately stopping distribution.
For structural solutions, initiate full proceedings at the District Court. This procedure typically lasts between 12 and 24 months and delivers a final judgment regarding trademark infringement and damages owed. Court fees start from €127 for simple cases to several thousand euros for complex proceedings, depending on the scope of the dispute.
When Is an Amicable Settlement Possible in the Netherlands?
An amicable settlement offers advantages when both parties are willing to negotiate regarding trademark use, territorial division, or financial compensation. Approximately 60% of trademark disputes are resolved through a settlement agreement, avoiding protracted and costly proceedings. This agreement definitively regulates the rights and obligations of both parties.
Amicable settlements are particularly sensible when your legal position is not unequivocally strong, or when litigation costs exceed potential benefits. For example, if the conflicting mark is only used in a limited geographic region, territorial demarcation can offer a workable solution. Additionally, parties can make arrangements regarding specific product categories or visual modifications to the conflicting mark.
A settlement agreement must be carefully drafted by a lawyer specializing in trademark law. This agreement typically contains clauses regarding future trademark use, potential damages, confidentiality, and penalty provisions for violation. Furthermore, arrangements are often made for procedural costs and legal fees, whereby parties each bear their own costs or agree on a distribution key.
Negotiation regarding a settlement usually proceeds through a lawyer who communicates with the opposing party on your behalf. This legal support ensures that your interests are optimally protected and that the agreement is legally sound. Professional guidance also prevents you from conceding too much or overlooking essential points.
How Do You Protect Your Trademark Rights Preventively in Dutch Law?
Register your trademark timely with the Benelux Office for Intellectual Property or the EU Intellectual Property Office for European protection. A registered trademark grants exclusive rights for ten years, renewable indefinitely. Without registration, formal legal protection against copying or imitation is absent.
Actively monitor the trademark register and the market for conflicting trademark applications. Subscribe to alert services that automatically notify you of new trademark applications resembling your mark. This enables you to take action within the threatening opposition period of three months. Approximately 30% of trademark holders discover too late that a competitor has registered a similar mark, complicating legal action.
Enforce your trademark rights consistently by taking immediate action against any form of unauthorized trademark use. Tolerance for five years can lead to acquiescence, whereby you lose your right to legal action. Therefore, documenting and formally contesting every infringement is essential, regardless of scope or commercial importance.
Protect your trademark internationally if you export or operate online outside the Netherlands. National trademark registrations only provide protection within their own territory, whereas an EU trademark provides protection in all 27 member states. For worldwide protection, you can register an international trademark via the Madrid Protocol, enabling registration in multiple countries through one application.
What Role Do Online Evidence Materials Play in the Netherlands?
Online evidence materials currently form the basis of virtually every trademark infringement proceeding. Courts accept screenshots of websites, webshops, social media, and digital advertisements as valid evidence, provided they include timestamps and metadata. Trademark use on an accessible website generally suffices to establish trademark infringement, even when physical sales activities are limited.
The EU General Court has determined that actual use of a trademark on a website outside the European Union may be considered when establishing whether a future risk of taking advantage exists within the Netherlands. For example, when a competitor uses a mark on a website in Arabic but also operates an English version with a ‘.com’ extension, this may indicate intentions to reach Dutch consumers. This logical conclusion strengthens the trademark holder’s legal position.
Therefore, systematically collect online evidence as soon as you identify trademark infringement. Screenshot all relevant web pages, including product descriptions, prices, and contact information. Store this evidence digitally and have it notarially recorded if desired for additional legal certainty. Approximately 75% of successful trademark infringement cases primarily rely on online evidence.
Digital evidence also provides insight into the scope of the infringement. Through web analytics tools and social media statistics, you can map the distribution and impact of the infringing mark. This information supports your claim for damages and profit surrender, as you can present concrete figures regarding turnover and reach of the infringer.
Practice example trademark dispute: An Amsterdam clothing entrepreneur discovered that a competitor used a virtually identical logo on sportswear and advertised online via Instagram. The entrepreneur systematically documented all posts, took screenshots of the webshop, and collected advertising materials. Through a lawyer, he sent a cease and desist letter with a 14-day deadline. The competitor did not respond, whereupon summary proceedings were initiated. The preliminary relief judge ruled within three weeks that trademark infringement existed and imposed a penalty of €5,000 per violation. The competitor immediately ceased use and compensated €8,500 in procedural costs.
What Are the Costs of a Trademark Dispute in the Netherlands?
The costs of a trademark dispute vary considerably depending on the chosen legal strategy. A formal cease and desist letter through a lawyer typically costs between €500 and €1,500, depending on complexity and required legal analysis. This investment often pays off, as approximately 60% of infringers cease after receiving a professional cease and desist letter.
If summary proceedings are necessary, costs including court fees and legal fees typically range between €3,000 and €7,500. Court fees for summary proceedings start from €127 but can increase depending on the claim value. Additionally, legal fees apply for preparation, procedural documents, and hearings, with hourly rates varying between €200 and €400 for specialized trademark lawyers.
Full proceedings cost considerably more, with total costs between €10,000 and €25,000 or higher for complex cases. This procedure typically lasts 12 to 24 months and includes extensive written preparations, witness examinations, and legal research. Moreover, you risk having to pay the opposing party’s procedural costs if you lose the case, although judges often impose a moderate cost award.
Therefore, carefully consider whether expected benefits outweigh legal costs. Engage a specialized lawyer timely for a realistic assessment of your legal position and likelihood of success. This advice prevents costly proceedings with uncertain outcomes.
Are you dealing with a trademark dispute or do you suspect your trademark is being infringed? Our specialized lawyers analyze your legal position and advise on the most effective strategy. From cease and desist letter to full proceedings, we protect your interests professionally and results-oriented.
How Do You Prevent Acquiescence Under Dutch Law?
Acquiescence occurs when you consciously take no action against trademark use by a third party for five consecutive years while being aware of this use. After this period, you may no longer be able to take action against the use, even if trademark infringement exists. This regulation protects entrepreneurs who use a trademark in good faith for years without protest from the senior trademark holder.
Prevent acquiescence by responding immediately as soon as you identify trademark infringement. Send a formal cease and desist letter within several weeks identifying the unlawful use and demanding cessation. Document all correspondence and retain evidence of your timely action. This documentation demonstrates that you actively enforce your trademark rights and do not permit others to use your mark unlawfully.
If you temporarily decide not to take action, for example due to strategic considerations or ongoing negotiations, record this in writing in a license agreement or tolerance declaration. This agreement defines the conditions under which the third party may temporarily use your mark without acquiescence occurring. Additionally, the agreement contains an end date and termination clauses.
Continuously monitor the use of your mark by periodically searching online for potential infringements. Establish a reporting system within your organization so that sales representatives, customers, and distributors can immediately report potential trademark infringement. This proactive attitude ensures you do not unknowingly permit others to use your mark for years.
What Special Protection Do Well-Known Marks Enjoy in the Netherlands?
Well-known marks receive enhanced legal protection under Dutch and European trademark law. These marks can take action against use of similar signs, even for completely different products or services, when unfair advantage is taken of the reputation or distinctive character of the well-known mark. For example, a well-known cosmetics brand can take action against use of a similar sign for clothing or electronics.
Protection also applies against dilution, whereby the distinctive character of the well-known mark is impaired by being associated with different types of products or services. Courts assess whether the economic behavior of the average consumer is influenced by use of the junior mark. For well-known marks with an exceptional reputation, the threshold for successful enforcement is considerably lower than for less well-known marks.
Well-known marks can also take action against use that damages the reputation of the mark. This concerns, for example, use in qualitatively inferior or unethical contexts, thereby damaging the image of the well-known mark. Courts take such cases very seriously, as reputation constitutes an essential commercial asset for well-known marks.
To obtain protection as a well-known mark, you must demonstrate that your mark enjoys substantial recognition among the relevant public in the Netherlands. Evidence for this includes market research, turnover figures, advertising expenditure, and media coverage. Approximately 15% of registered trademarks qualify as well-known marks, giving these marks a strong competitive position.
Contact our law firm for personal legal advice regarding your specific trademark dispute. Our specialists assess your legal position, collect evidence, and represent you effectively in negotiations or proceedings. Timely legal assistance maximizes your chances of successfully enforcing your trademark rights.
