LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre and Florentine Frias, Elvinger Hoss Prussen
graphical origin of the product or service); and • trade marks that are identical or similar to an earlier trade mark. The distinctive character of a sign is a relative concept that must be assessed on a case-by- case basis, in relation to the goods and services for which the trade mark is applied for. If a sign does not, in itself, have distinctive char - acter, it may acquire it through use. Acquired distinctive character means that, as a conse - quence of its use, the sign is now perceived by the relevant section of the public as being a trade mark that distinguishes the goods or services of the applicant. As indicated on the website of the Benelux Office for Intellectual Property (BOIP), supporting documents may concern the sign’s market share or the intensive, geographically widespread and long-standing nature of the use of the sign, statements from trade and profes - sional associations or opinion polls. Finally, the exclusive rights granted to the owner of a Benelux trade mark are subject to the regis - tration of the trade mark (except for well-known trade marks). 2.3 Trade Mark Rights A trade mark owner is granted exclusive rights, and is entitled to prevent any third party from using a sign in the course of trade without their consent when: • the sign is identical to the earlier trade mark and the goods or services at stake are also identical; or • the sign is identical or similar to the earlier trade mark, the goods or services at stake are identical or similar and there is a likelihood of
confusion on the part of the public between the sign and the earlier trade mark. The owner of a Benelux trade mark that has a reputation in the Benelux territory is also entitled to prohibit the use of a sign which, without due cause, takes unfair advantage of, or is detrimen - tal to, the distinctive character or the reputation of the trade mark (regardless of whether or not the sign is used in relation to goods or services that are identical or similar to those for which the earlier trade mark is registered). Even if the sign is not used as an indicator of the origin of goods or services, the owner of an earlier Benelux trade mark can prohibit the use of the sign in the course of trade, without due cause, that would take unfair advantage of or be detrimental to the distinctive character or the reputation of the earlier trade mark. 2.4 Use in Commerce Under the Benelux Convention, five years after the date on which a trade mark is registered, the trade mark owner can be requested to demon - strate that the trade mark has been put to genu - ine use in the Benelux territory for the goods or services for which it is registered. Use of the trade mark by a licensee is of course considered as use of a trade mark. Use of a trade mark in a form that differs in elements that do not alter its distinctive character from the form in which it was registered is also considered as genuine use of the trade mark. Supporting documentation includes invoices, screen prints of websites or advertising bro - chures showing the trade mark. Most of the time it is necessary to establish that the defendant has used the sign as a trade mark (but see also 2.3 Trade Mark Rights ). A
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