LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre and Florentine Frias, Elvinger Hoss Prussen
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 infringe - ment 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 administration 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 can - celled or revoked by the BOIP. However, in this case the stay of proceedings is optional and the judge has discretionary power in this regard. 7.9 Counterfeiting and Bootlegging Trade Marks Counterfeiting can trigger criminal liability. Pur - suant to Article 173 of the Luxembourg Criminal Code, trade mark infringement can constitute a criminal offence and be enforced through crimi - nal channels. The counterfeiter would incur fines of up to EUR75,000 and imprisonment of between three months and five years. In particular, the act of “counterfeiting, altering or falsifying seals, stamps, hallmarks or trademarks, or using counterfeit, altered or falsified seals, stamps, hallmarks or trademarks” can be characterised in particular as a criminal offence (Article 173 of the Luxembourg Criminal Code).
In addition and depending on the exact act, the counterfeiter could also be found guilty of a breach of customs 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 cus - toms duties fraudulently evaded. Authors’ Rights Under the Authors’ Rights Law, any malicious or fraudulent infringement of authors’ rights consti - tutes the offence of counterfeiting, which is sub - ject to criminal sanctions. Counterfeiting may take different forms (sale, importation, reproduc - tion, communication to the public, etc), but the intentional nature of the violation is essential. The offence of counterfeiting is punished by crim - inal 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 temporarily 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, confisca - tions and penalties imposed on their directors, representatives and agents.
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