LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre and Florentine Frias, Elvinger Hoss Prussen
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings Luxembourg law provides special procedural provisions for trade mark and authors’ rights pro - ceedings regarding the measures for preserving evidence, such as the infringement seizure ( sai- sie, contrefaçon ). Before any proceedings on the merits, the rights holder 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, elements, documents or processes likely to establish the alleged infringement, as well as the origin, desti - nation and extent thereof. The authorisation from the judge may extend to the seizure of samples of the alleged infringing goods and of the materi - als and instruments used to produce or distrib - ute 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 infring - er to provide the rights holder with all the infor - mation in its possession concerning the origin and distribution networks of the infringing goods and services (such as names and addresses of the producers, manufacturers, distributors 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 justified 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 infring - ing services on a commercial scale or who has provided, on a commercial scale, services used in infringing activities.
Special procedural provisions can also include provisional and precautionary measures (please see 10.1 Injunctive Remedies ). Luxembourg does not have specialised intellec - tual property courts for IP cases, which are not determined 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 matter may be referred to the presid - ing judge of the civil chamber of the Tribunal d’arrondissement (please see 7.5 Lawsuit Pro- cedure ). 8.2 Effect of Registration Except for well-known trade marks, the asser - tion of trade mark rights before the courts is sub - ject to the registration of the trade mark. During the first five years of existence of the trade mark (as of its registration), the defend - ant in infringement 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 subse - quent sign (please see 2.3 Trade Mark Rights ).
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