LUXEMBOURG Law and Practice Contributed by: Emmanuèle de Dampierre and Florentine Frias, Elvinger Hoss Prussen
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 show - ing 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 existence of counterclaims. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement In trade mark infringement actions, the follow - ing may be available means of defence for the defendant, depending on the circumstances: • the absence of genuine use of the oppos - ing 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 suc - cessive years, the use of the subsequent trade mark that is challenged, while being aware of such use (this means of defence will not apply if the alleged infringer has regis - tered 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 exceptions to the exclusive rights of a trade mark owner. For example, a trade mark owner
cannot prohibit the following 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 necessary 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 general fair use exception, but lists all the excep - tions that limit the prerogatives of the holder of authors’ rights when the work has been lawfully made available to the public. Moreover, the exer - cise of an exception must not conflict with the normal exploitation of the work and must not unreasonably prejudice the legitimate interests of the holder of the authors’ rights. For example, the holder of authors’ rights is not entitled to prohibit caricature, parody or pas - tiche for the purpose of mocking the work being parodied, on the condition that such caricature, parody or pastiche complies with good practice in this field (ie, only the elements strictly neces - sary for the caricature must be borrowed, and the caricature must not denigrate the work). The Authors’ Rights Law provides for a short quote exception, which is largely regulated. The holder of authors’ rights cannot prohibit short
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