LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre, Elvinger Hoss Prussen
7.9 Counterfeiting and Bootlegging Trade Marks
penalties imposed on their directors, representatives and agents.
Counterfeiting can trigger criminal liability. Pursuant to Article 173 of the Luxembourg Criminal Code, trade mark infringement can constitute a criminal offence and be enforced through criminal channels. The counterfeiter would incur fines of up to EUR75,000 and imprisonment of between three months and five years. The act of “counterfeiting, altering or falsify - ing seals, stamps, hallmarks or trademarks, or using counterfeit, altered or falsified seals, stamps, hall - marks or trademarks” can be characterised in par - ticular as a criminal offence (Article 173 of the Lux - embourg Criminal Code). In addition and depending on the exact act, the coun - terfeiter could also be found guilty of a breach of cus - toms legislation by importing goods requiring special authorisations that the counterfeit goods would not have obtained. This could lead to up to one year’s imprisonment and a fine calculated according to the amount of customs duties fraudulently evaded. Authors’ Rights Under the Authors’ Rights Law, any malicious or fraudulent infringement of authors’ rights constitutes the offence of counterfeiting, which is subject to crimi - nal sanctions. Counterfeiting may take different forms (sale, importation, reproduction, communication to the public, etc), but the intentional nature of the viola - tion is essential. The offence of counterfeiting is punished by crimi - nal fines of between EUR251 and EUR250,000, or by confiscation or destruction of the infringing works and their carriers, moulds, utensils, etc. Any repeat offence is punished by imprisonment of between three months and two years or a fine of between EUR500 and EUR500,000, or both. The court may also order (in addition) the closure of the establishment operated by the convicted person, either permanently or temporar - ily for a period specified by the court (not exceeding five years). The sentence can also be published and posted. In the case of counterfeiting, legal entities are jointly and severally liable for any fines, confiscations and
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings Luxembourg law includes special procedural provi - sions for trade mark and authors’ rights proceed - ings regarding the measures for preserving evidence, such as the infringement seizure ( saisie contrefaçon ). Before any proceedings on the merits, the rights-hold - er may request from the presiding judge of the court of first instance the authorisation to carry out (through experts), in any place, a description of all objects, ele - ments, documents or processes likely to establish the alleged infringement, as well as the origin, destination and extent thereof. The authorisation from the judge may extend to the seizure of samples of the alleged infringing goods and of the materials and instruments used to produce or distribute these infringing goods. During the court proceedings, if the court finds that there has been an infringement, it may, at the request of the rights-holder, order the infringer to provide the rights-holder with all the information in its posses - sion concerning the origin and distribution networks of the infringing goods and services (such as names and addresses of the producers, manufacturers, dis - tributors and other previous holders of the goods or services, and information on the quantities at stake and on the price obtained), provided that this is a justi - fied and proportionate measure. The order may also be issued against anyone who is in possession of the infringing goods on a commercial scale, who has used the infringing services on a com - mercial scale or who has provided, on a commercial scale, services used in infringing activities. Special procedural provisions can also include provi - sional and precautionary measures (please see 10.1 Injunctive Remedies ). Luxembourg does not have specialised intellectual property courts for IP cases, which are not determined
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