LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre, Elvinger Hoss Prussen
• 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. 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. These actions may be requested in respect of all or some of the goods and/or services designated by the trade mark. 5.5 Legal Remedies Against the Decision of the Trade Mark Office 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. 5.6 Amendment in Revocation/Cancellation Proceedings 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. 5.7 Combining Revocation/Cancellation and Infringement If revocation or cancellation is invoked with infringe - ment, the means of action will be heard together. 5.8 Measures to Address Fraud A trade mark is liable to be declared invalid if the reg - istration was made in bad faith by the applicant. This will be the case when the trade mark application was made with the knowledge that the sign belongs to a third party, or when the application was made for punitive or blocking purposes.
tered. 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 liv - ing 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 ). It is possible to assign an application for a Benelux trade mark. However, enforcing such title would be difficult while the application is pending. 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 Direc - tive (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 assignment 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. 6.2 Licensing Requirements or Restrictions 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
6. Assignments and Licensing 6.1 Assignment Requirements and
Restrictions Trade Marks
Benelux trade marks may be assigned for all or some of the goods and services for which they are regis -
277 CHAMBERS.COM
Powered by FlippingBook