LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre and Florentine Frias, Elvinger Hoss Prussen
case law. The absence of confusion between the original work and the copy or the price difference between them are not taken into consideration when assessing infringement. 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 send - ing of a formal 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 cer - tain circumstances involving authors’ rights, the matter can be brought before the judge presid - ing 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 jurisdiction at second instance. Finally, the Cour de cassation (Supreme Court) would have juris - diction at third instance. It is recommended to prepare well before filing a lawsuit for trade mark or authors’ rights infringe - ment. 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 man - datory (before the Cour de cassation , the Court of Appeal and the Tribunal d’arrondissement when the civil procedure is applicable). 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 Lux - embourg and the defendant is domiciled in Lux - embourg. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants Declaratory judgments exist in Luxembourg, but Luxembourg 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 disconnected from the concept of having an interest in taking legal action ( intérêt à agir ). Therefore, for a declaratory action to be admis - sible, 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 con - crete and specific 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 existence of earlier rights. The court has underlined that “the plaintiff has a clear economic interest in obtaining the judi - cial 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 com - plete safety”.
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