LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre, Elvinger Hoss Prussen
not taken into consideration when assessing infringe - ment. 7.4 Prerequisites and Restrictions to Filing a Lawsuit There is no prerequisite to filing a trade mark or an authors’ rights lawsuit, but the prior sending of a for - mal demand letter is common and recommended. Initiating abusive or vexatious proceedings can be sanctioned. 7.5 Lawsuit Procedure Before judicial courts, the Tribunal d’arrondissement has jurisdiction to hear trade mark matters and authors’ rights matters at first instance for civil actions in the merits. In certain circumstances involving authors’ rights, the matter can be brought before the judge presiding over the Tribunal d’arrondissement (in which case, no damages can be claimed, only ces - sation measures and the publishing or posting of the judgment). The Court of Appeal will have jurisdic - tion at second instance. Finally, the Cour de cassa- tion (Supreme Court) would have jurisdiction at third instance. It is recommended to prepare well before filing a law - suit for trade mark or authors’ rights infringement. The gathering of evidence (bailiff’s report, seizure) and the sending of warning letters will incur costs. Representation by a lawyer in trade mark and authors’ right litigation matters is mandatory (before the Cour de cassation , the Court of Appeal and the Tribunal d’arrondissement when the civil procedure is appli - cable). Only the owners of EU or Benelux trade marks may bring infringement claims in Luxembourg (regardless of their nationality). Foreign authors’ rights-holders may bring infringement claims in Luxembourg if the infringement occurs in Luxembourg and the defendant is domiciled in Luxembourg. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants Declaratory judgments exist in Luxembourg, but Lux - embourg law does not recognise a “pure” declaratory action – ie, one whose purpose is simply to ask the
courts for advice and which would be totally discon - nected from the concept of having an interest in taking legal action ( intérêt à agir ). Therefore, for a declaratory action to be admissible, it must meet two cumulative conditions: • there must be a serious and severe threat to a party’s right to the extent of creating a specific disturbance; and • the judicial declaration must be of such a nature as to provide the claimant with a concrete and spe - cific benefit. The Benelux Convention and the Authors’ Rights Law do not provide for declaratory judgment proceedings, but case law has recognised the admissibility of a claim aimed at having the judge declare whether the use of a trade mark was lawful considering the exist - ence of earlier rights. The court has underlined that “the plaintiff has a clear economic interest in obtaining the judicial declaration it is seeking, which will enable it (if the court finds in its favour) to continue to exploit the trade mark it has registered in complete safety”. 7.7 Small Claims Luxembourg does not provide an alternative avenue to resolve small trade mark or authors’ rights claims, except for the possibility for the parties to settle if they wish to do so. 7.8 Effect of Trade Mark and Copyright Office Decisions Case law has ruled that a trade mark infringement action must be suspended pending a final decision on the application for revocation or cancellation of the trade mark concerned (which is the basis for the infringement action), which would be pending before the BOIP. This is in the interests of the proper admin - istration of justice, because the owner of the trade mark concerned will no longer be able to bring an infringement action on the basis of this trade mark if it is cancelled or revoked by the BOIP. However, in this case the stay of proceedings is optional and the judge has discretionary power in this regard.
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