LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre, Elvinger Hoss Prussen
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. It is possible to license an application for a Benelux trade mark. However, enforcing such title would be difficult while the application is pending. Authors’ Rights The legal regime provided for the assignment of eco - nomic 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 inter - preted 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. 6.3 Registration or Recording of an Assignment or Licence If opposability against third parties is sought, a trade mark assignment or licence will have to be regis - tered 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 authors’ rights in Luxembourg. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits The Benelux Convention does not lay down any spe - cific 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 limita - tion periods for civil actions, of ten years as from the knowledge of the infringement acts between mer - chants or between merchants and non-merchants, or 30 years between non-merchants. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Trade Marks Before the civil courts, the owner of a registered Ben - elux 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 ser - vices 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 reputation of the trade mark. Authors’ Rights An authors’ rights-holder benefits from two legal ave - nues in case of infringements of their authors’ rights: civil actions and criminal actions. In practice, civil actions are much more common to pursue infringe - ment.
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