LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre, Elvinger Hoss Prussen
9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement In trade mark infringement actions, the following may be available means of defence for the defendant, depending on the circumstances: • the absence of genuine use of the opposing trade mark (and therefore requesting the revocation of the earlier trade mark via a counterclaim) (please see 5.2 Legal Grounds for Filing an Opposition or Cancellation ); • the fact that the owner of the earlier trade mark has tolerated, for a period of five successive years, the use of the subsequent trade mark that is chal - lenged, while being aware of such use (this means of defence will not apply if the alleged infringer has registered the subsequent trade mark in bad faith); and • the trade mark rights are exhausted (please see 9.3 Exhaustion ). The Benelux Convention also provides several excep - tions to the exclusive rights of a trade mark owner. For example, a trade mark owner cannot prohibit the fol - lowing uses, in the course of trade, to the extent such uses are made in accordance with honest practices in industrial or commercial matters: • use by an individual of his/her name or address; • use by a third party of signs or indications that are not distinctive or use thereof in a descriptive way (as a reference to the kind, quality or quantity of the goods or services); or • use by a third party of the trade mark as a neces - sary reference to indicate the intended purpose of a good or service (for accessories or spare parts compatible with the goods or services bearing the trade mark). 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The Authors’ Rights Law does not provide for a gen - eral fair use exception, but lists all the exceptions that limit the prerogatives of the holder of authors’ rights when the work has been lawfully made available to the public. Moreover, the exercise of an exception must
by technical judges but by the same judges as for civil and commercial matters (with the help of technical experts if needed). The parties do not have an influence on who is the decision-maker. If the holder of the authors’ rights decides to request cessation measures only, the mat - ter may be referred to the presiding judge of the civil chamber of the Tribunal d’arrondissement (please see 7.5 Lawsuit Procedure ). 8.2 Effect of Registration Except for well-known trade marks, the assertion of trade mark rights before the courts is subject to the registration of the trade mark. During the first five years of existence of the trade mark (as of its registration), the defendant in infringe - ment proceedings cannot invoke the non-use of the trade mark and request the revocation of the opposing trade mark on that ground. The trade mark owner is entitled to prohibit the use of a subsequent sign or trade mark even if the goods and services at stake are only similar. Under certain circumstances (including a risk to the reputation of the earlier trade mark), use of the subsequent sign as an indicator of origin for goods and services is not even a condition for requesting the cessation of the use of the subsequent sign (please see 2.3 Trade Mark Rights ). 8.3 Costs of Litigating Infringement Actions The costs related to infringement actions may vary depending on several factors, including: • the costs incurred to build up evidence (eg, infringement seizures); • the costs incurred to gather evidence showing the reputation of the earlier trade mark; and • the complexity of the case and the nature of the arguments opposed by the defendant or the exist - ence of counterclaims.
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