Sep 2022

Belgium

Sections

Scroll down to read the full chapter or click on the headings below to jump to the relevant section.

Contributing Firm

Top

1 . Trademark

Top

1.1. Sources of law

Belgium is part of the Benelux trademark system (along with Luxembourg and The Netherlands), regulated by the Benelux Convention on Intellectual Property (trademarks and designs) (BCIP).

Belgium also takes part in European instruments adopted to support uniformization and harmonization efforts in respect of trademarks, including:

  • Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trademark.
  • Directive (EU) 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trademarks.
  • Regulation (EU) 608/2013 of 12 June 2013 concerning customs enforcement of intellectual property rights (repealing Council Regulation (EC) 1383/2003).
  • Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights.

Belgium is also a member to several international instruments, notably:

  • The Paris Convention for the Protection of Industrial Property of 20 March 1883 (as revised and amended).
  • The Madrid Agreement of 14 April 1891 concerning the international registration of mark and Protocol relating to the Madrid Agreement of 27 June 1989 (as revised and amended).
  • The Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (as revised and amended).
  • The Agreement on Trade-Related Aspects of Intellectual Property Rights of 15 April 1994 (TRIPS Agreement).

When a conflict arises, international and EU treaties ratified by the competent Belgian authorities take precedence over the Belgian legislation. Case law is not considered a formal source of law; it is, however, an important interpretational instrument.

Top

1.2. Substantive law

Use is not considered a source of trademark rights. Protection is only granted through registration, or when the trademark is well-known.

(Registered) trademarks with a reputation are distinguished from (unregistered) well-known trademarks. Trademarks with a reputation have been defined by the European Court of Justice (CJEU) as trademarks “known by a significant part of the public concerned by the products or services covered by that trademark” (CJEU, 14 September 1999, General Motors, C-375/97). Unlike trademarks without reputation, the protection of trademarks with a reputation extends to dissimilar goods and services, provided that the earlier trademark is reputed and the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark. Proof of likelihood of confusion is not necessary, unlike for unregistered well-known trademarks. These well-known trademarks “must be well known throughout the territory of the Member State of registration or in a substantial part of it” (CJEU, 22 November 2007, Nieto Nuño, C-328/06). As per Article 6bis of the Paris Convention, the broader protection only extends to the categories of goods and services for which these trademarks are well-known.

No specific legal provisions ensure a broader range of protection for trademarks belonging to the luxury industry. However, an “aura of luxury” may make it easier to argue that the use of a sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of a trademark (see above, and C-375/97, General Motors).

Top

1.3. Enforcement

To assess broader protection, consideration is given to all the relevant facts of the case, in particular the market share held by the trademark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (see above Question 1.2 and C-375/97, General Motors). This can be proven through all legal means (including oral testimony, affidavit or expert evidence).

A trademark can be enforced against a domain or trade name used in the course of trade. Trademarks can also be successfully enforced against metatags, provided the use is liable to affect the functions of the trademark (CJEU, 23 March 2010, Google France and Google, C-236/08 to C-238/08).

Trademarks can also be enforced against their unauthorized use in social media, provided it occurs in the course of trade. Outside a commercial context, enforcement requires that the use be without due cause and would take unfair advantage of, or be detrimental to, the distinctive character or the repute of a Benelux trademark. In some instances, social media platform operators may also be held accountable.

The owner can enforce their trademark against use in comparative advertising where the advertising takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of a Benelux trademark.

There is no specific parody exception in trademark law. Yet, unauthorized use of a trademark in parody does not go unpunished, provided such use takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of a Benelux trademark. A trademark considered a copyrightable work can be enforced against its unauthorized use in parody, provided the latter fails to meet its essential conditions under copyright law.

A trademark owner cannot take action claiming both trademark infringement and unfair competition for the same set of facts. The owner will only be able to rely on unfair competition in parallel or separate proceedings provided the use of such sign can be considered abusive.

Luxury brands are particularly vulnerable to (online) piracy, stressing the importance of using continually evolving technology to protect and enforce their IP rights. In addition to the measures and actions set up on their own, luxury brands are, for example, increasingly collaborating with online marketplaces, imposing tougher sanctions and setting up monitoring systems.

Top

2 . Copyright

Top

2.1. Sources of law

Copyright protection is regulated by Belgian law; copyright provisions have been included in the Belgian Economic Code (BEC) (Art. XI.164 to XI.293).

Belgium also takes part in European instruments adopted to support copyright harmonization efforts, including:

  • Directive (EU) 2019/790 of 17 April 2019 on copyright and related rights in the Digital Single Market (amending Directives 96/9/EC and 2001/29/EC).
  • Regulation (EU) 2017/1563 and Directive (EU) 2017/1564 of 13 September 2017 (amending Directive 2001/29/EC).
  • Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society.
  • Regulation (EU) 608/2013 of 12 June 2013 and Directive 2004/48/EC of 29 April 2004 (see above, Question 1.1: Trademark).

Belgium is also a member to international instruments dealing with copyright, notably:

  • The Berne Convention for the Protection of Literary and Artistic Works (as revised and amended on 28 September 1979).
  • The Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations of 26 October 1961.
  • The TRIPS Agreement.

Should a conflict arise between these instruments, the conflict rules mentioned above shall apply (see Question 1.1: Trademark).

Top

2.2. Substantive law

Copyright protects all artistic and literary works, as long as they are original and expressed in tangible form, in line with the case law of the CJEU. An infinite number of protectable works may exist, as long as they satisfy these two requirements.

Objects of industrial, fashion or accessory design are copyrightable when considered as original creations, that is when they are the author’s own intellectual creation, resulting from the author’s own creative choices (CJEU, 16 July 2009, Infopaq International, C-5/08). This will not be the case if the design of the object is merely dictated by technical or functional characteristics.

Copyright covers two types of rights. Economic assignable and transferable rights, namely the author’s reproduction right and right of communication to the public. Moral rights include the right for the author to decide (when) to disclose their work, a “paternity right”, and the right to integrity of the work.

The copyright holder is the natural person-creator of the work. Legal entities may however claim authorship of works created by their employees, consultants, shareholders, directors, or suppliers, through an agreement. Usually, a provision will be added in this respect in the employment or services agreement. A presumption exists that the author is the person whose name is fixed to the work.

Assignments shall always be proven in writing and shall be interpreted restrictively. For transfers involving the author-natural person, additional requirements apply:

  • The remuneration of the author, extent and duration of the assignment must be specified for each form of exploitation, which shall be consistent with honest practices.
  • The assignment cannot cover unknown forms of exploitation.
  • Assignment relating to future works is valid only for a limited time, provided the genres are specified.
  • When the object incorporating a work is assigned, this does not automatically entail the right to exploit it; the author must be guaranteed continued access to their work.

Less stringent formalities apply for assignments in the framework of an employment contract and for works made for hire.

Moral rights are inalienable; their exercise may however be waived, although undisputably (e.g. in writing) and only regarding a specific work.

Copyright protection expires 70 years after the death of the (last) author. The term of protection is calculated from the 1 January of the year following the event that triggers the protection period.

Top

2.3. Enforcement

Copyright protection is not subject to any registration formality.

Actual copying is not necessary for the assessment of copyright infringement. One will look at the overall impression the original and allegedly infringing work produce.

Copyright can be enforced against a trademark, a design, a patent, a domain or trade name and a pseudonym.

Copyright can also be enforced against its unauthorized use in social media.

Copyright can be enforced against its unauthorized use in comparative advertising, provided the infringing work reproduces the elements of an original work.

The author may not prohibit parody of a lawfully published work since it is considered as an appropriate way to express an opinion, unless the parody fails to meet its essential characteristics (i.e. evoke an existing work while being noticeably different from it and constitute an expression of humour and mockery).

The alleged infringer can rely on the typical defences under procedural law. They could also challenge the claimant’s authorship or the original character of their work. They could demonstrate that the allegedly infringing work does not reproduce the original elements of the work. The alleged infringer could also challenge the existence or seek reduction of damages sought by the claimant. There is no “fair use” doctrine in Belgium since the legislator has provided for a closed list of copyright exceptions, which can also be relied on as defences.

In case of dual protection under copyright and trademark law, a copyright may be declared unenforceable if the copyright holder tolerated its use for 5 years. In any case, a copyright may be declared unenforceable if the copyright holder abuses their right to institute proceedings.

The time limit for bringing a copyright infringement action is governed by the general rules of the Belgian Civil or Criminal Code, depending on the type of claim. The prescription period can vary from 5, 10 to 30 years. In addition, the BEC provides for specific time limits, which shall take precedence over the general rules concerning prescription periods in criminal and civil law.

Top

3 . Design

Top

3.1. Sources of law

There is no Belgian design law. At Benelux level, designs are regulated by the BCIP.

At European level, designs are regulated by Council Regulation (EC) 6/2002 of 12 December 2001 on Community designs (Community designs Regulation), providing for a uniform design protection in all EU Member States. This Regulation covers (un)registered Community designs.

Belgium is also a member country to international instruments, notably the Paris Convention and the TRIPS Agreement.

Should a conflict arise between these instruments, the conflict rules mentioned above (see Question 1.1: Trademark) shall apply.

Top

3.2. Substantive law

Various types of products are protectable by way of (un)registered design in Belgium. This includes any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols, and typographic typefaces. Computer programs fall outside the scope of protection.

As a rule, designs must be registered to enjoy protection under design law, with the exception of unregistered designs. They can benefit from a protection under the Community designs Regulation. Two requirements must be met to obtain a valid (un)registered design: novelty and individual character. Moreover, the design must not be expressly excluded from the scope of protection (designs dictated by their technical function, designs of interconnection, or contrary to public policy or morality).

The right to the design shall vest in the designer. Assignments must be in writing and basic rules of contract law remain entirely applicable.

When drafting a design assignment agreement, attention should be paid to the dual protection under copyright and design law. Under design law for employment contracts and works made for hire, the employer or commissioning party is presumed to be the holder of the right to the design (contrary to copyright law). It has thus been legally provided that when an original design is created by an employee, the copyright relating to the (un)registered design shall belong to the employer. As a matter of precaution, it is recommended to incorporate a copyright assignment clause in favour of the employer or commissioning party in the agreement.

There are no moral rights on designs, although the designer is entitled to the right to be cited.

Registered designs shall be protected for 5 years as from the date of the filing of the application. The term of protection may be renewed for one or more periods of 5 years each, up to a total term of 25 years. Unregistered designs shall be protected for 3 years as from the date on which the design was first made available to the public within the EU.

Top

3.3. Enforcement

The design holder shall have the right to oppose the use of any design which produces a different overall impression on the informed user (EU General Court, 6 October 2011, Industrias Francisco Ivars v OHMI – Motive, T‑246/10). For unregistered designs, actual copying is necessary to assess design infringement.

A design can be enforced against a copyright (provided the design is original), a trademark (provided the design has a distinctive character), a patent (when features of appearance of a product are not solely dictated by its technical function), as well as a domain or trade name.

A design can furthermore be enforced against its unauthorized use on social media.

A design can also be enforced against its unauthorized use in comparative advertising. The design holder will however not be entitled to oppose their design against non-commercial or experimental uses, nor against uses for illustrative or teaching purposes.

There is no specific parody exception in design law. A design could however be enforced against its unauthorized use in parody, provided the latter fails to meet its essential conditions under copyright law (see above Question 2.2 Copyright: Substantive law).

The alleged infringer can rely on the typical defences under procedural law. They could also object to the novelty or individual character of the design or demonstrate that the allegedly infringing elements of their design are actually dictated by their technical function. The alleged infringer could object to the existence or seek reduction of damages sought by the claimant. The alleged infringer can also rely on the repair clause as a defence, provided they respect a threefold duty of care (CJEU, 20 December 2017, Acacia, C-397/16, §§ 86 to 88).

A design may be declared unenforceable on the same grounds as those mentioned above (see Question 2.3 Copyright: Enforcement). The time limit for bringing a design infringement action is governed by the general rules concerning prescription periods in the Belgian Civil and Criminal Code. Consequently, a similar reasoning as outlined in Question 2.3 applies to proceedings brought by the design holder.

A design holder can take action claiming both design and copyright infringement for the same set of facts. A design holder cannot, however, take action claiming both design infringement and unfair competition. Reliance on unfair competition in parallel or separate proceedings requires that the use of such design be considered abusive.

Top

4 . Right of privacy, publicity and personal endorsement

Top

4.1. Sources of law

Individuals are entitled to control (i.e. consent to) the commercial use of their name, image, likeness, or other unequivocal aspects of their identity (image).

The foundation of the right of publicity stems from Article XI.174 BEC, as well as the right of privacy. It has essentially been developed in case law and doctrine.

Top

4.2. Substantive law

The right of publicity is universal. Any individual is a right holder owing to the simple fact that they are a living human being. No further conditions (e.g. capacity) are required under Belgian law. The individual must however be distinguishable (recognizable) to rely on the right of publicity.

The right of publicity survives the death of the individual. It can then be exercised by the heirs of the deceased individual against an unauthorized use of the individual’s image, for a maximum period of twenty years following the death of that individual. Pursuant to Belgian case law, the heirs also have a right to the protection of the memory (intimacy) of the deceased. This right is considered as the heirs’ own personality right, independent from the right of publicity. It can be opposed as a ground against any use of the image of the deceased which would violate their memory.

As a rule, the (exercise of the) right of publicity cannot be assigned or licensed by way of an agreement. In practice however, an individual can authorize the use of their image (reproduction, communication, exhibition, etc.), under certain conditions. Such authorization is not equivalent to an assignment. It must moreover be specific to the intended use and cannot be granted in unrestricted terms.

The user will only be granted an authorization to use the licensor’s image through a(n) (non) exclusive license. The license does not entail a waiver of the (exercise of the) right of publicity in itself, but of the right holder’s right to prohibit certain uses of their image. Following the death of the licensor, the license will not be transferred to the heirs, unless the terms of the license state otherwise.

Belgian law does not impose specific requirements with respect to the granted license. All basic rules of contract law remain applicable. Although a written contract is not required, it is highly recommended to facilitate the burden of proof. Pursuant to Belgian case law, such authorization can be granted tacitly, provided it is certain and unequivocal. Tacit evidence will usually be based on a series of presumptions (surrounding circumstances, no objection, etc.), subject to restrictive interpretation.

As a rule, a licensor may withdraw their consent at all times (only for the future). Contractual authorization with respect to a certain use of an image does not prevent such withdrawal. The right holder may however have to refund any remuneration which has been paid by the user to the right holder or be required to pay damages, provided they demonstrate the existence and extent of it.

Top

4.3. Enforcement

In Belgium, the right of publicity can be enforced against any unauthorized use (be it commercial or not) of an individual’s image.

Since any individual has a right of publicity, it is not necessary to prove that the individual’s image has commercial value to contest the unauthorized use of their image. However, when an individual’s image becomes a source of income, proof of the commercial value of their image may facilitate the grant of an injunction or other remedies.

The right of publicity can be enforced against anyone making or using an individual’s image. This does not mean that the scope of enforcement of this right is unrestricted. Among the defences available to the alleged infringer, the latter could rely on the right to freedom of expression, which comprises the public’s right to information. This right is, however, not absolute and the act of disclosure must notably be weighed in against the contribution to a debate of public interest and the relevance of such disclosure for the public. The alleged infringer may also claim (by providing all relevant evidence) that authorization has been granted for the use in question. In the event a third party was responsible for gathering such authorization but failed to do so, the alleged infringer may also pursue remedies against them.

To add more value to their brand’s image, luxury brands rely on celebrities and online influencers. The latter could however decide to stop collaborating with a brand and claim damages (e.g. should the brand be confronted with scandals or unethical practices), or pressure the brand to change certain policies (e.g. being fur-free).

Top

5 . Product placement

Pursuant to Article 11 of the AMS directive (Directive 2010/13/EU of 10 March 2010 on the coordination of certain provisions laid down by law, regulation or administrative action in Member States concerning the provision of audiovisual media services, as amended by Directive (EU) 2018/1808 of 14 November 2018), product placement is allowed as a rule, subject to certain exceptions. Due to Belgium’s particular institutional framework, the provisions relating to product placement have been transposed in three separate media decrees for the country’s French Community (Decree of 4 February 2021), Flemish Community (Decree of 19 March 2021 amending the Decree of 27 March 2009), and German-speaking Community (Decree of 1st March 2021).

The requirements laid down in the respective decrees in relation to product placement are the same as those provided for in Article 11, § 3 of the AMS directive. The last requirement, which provides that the viewer be clearly informed of the existence of product placement, only applies to programmes that have been produced or commissioned by a media service provider or by a company affiliated with that media service provider. Product placement for tobacco and medicinal products and treatments is prohibited. Under the French Community’s decree, there is no limitation as such for medicinal products, although publicity surrounding it is subject to additional requirements.

As provided under Article 11, § 2 of the AMS directive, product placement is expressly prohibited in news and current affairs programmes, consumer affairs programmes, religious and children’s programmes. The decree enacted by the French Community also extends the prohibition to non-confessional philosophical programmes.

No specific remedies are provided to the brand owner in the event the other party fails to perform the agreement. The brand owner could however always initiate civil proceedings to repair the harm suffered as a consequence of the contractual breach.

Top

6 . Protection of corporate image and reputation

The right of publicity does not extend to legal entities or corporations. However, corporations may rely on the protection of their image and reputation vis-à-vis (non-)competitors and customers. Counterfeiting, unfair competition, denigration and defamation have been recognized in Belgian case law as acts that may adversely affect the image and reputation of a corporation. Corporations may to a certain extent also rely on their right to privacy (e.g. in respect of violation of trade secrets).

Corporations may protect their image by relying on specific clauses included in selective distribution agreements. These agreements however fall outside the scope of the European Block Exemption Regulation (BER) (Commission Regulation (EU) 330/2010 of 20 April 2010) when they contain clauses qualifying as hardcore or excluded restrictions.

Selective distribution agreements may typically include clauses prohibiting retailers to sell the corporation’s products to re-sellers whose image is below a defined standard.

The prohibition to sell below a certain price is equivalent to the establishment of a fixed or minimum resale price or a fixed or minimum price level. Such clause would be prohibited as it includes a hardcore restriction infringing EU competition law (Article 4, (a) BER).

In the same vein, a clause providing that a retailer be prohibited from buying non-original (but otherwise legitimate) spare parts and components would also be prohibited (Article 4, (b), (iv) BER).

Liquidated damages or stipulated fines clauses for breach by a party of any provisions protecting reputation or corporate image may legitimately be included in selective distribution agreements. Judges are however entitled to reduce the damages claimed or the fines stipulated should such amounts be considered excessive.

Luxury brands have always considered the resale market as a threat to their image. However, since the secondary luxury market is expected to grow even faster than the primary one, luxury brands are forced to reconsider and adapt their strategy, depending on what they want to achieve (control of their brand image, sustainability, and so on).

EXPERT ANALYSIS

Foreword

Nicolas Martin
Sheila Henderson

Chapters

Brazil

Luiz Edgard Montaury Pimenta
Marianna Furtado de Mendonça

China

Rebecca LIU
Yunze LIAN

Cyprus

George Tashev
Ioanna Martidi
Maria Hinni
Angelos G. Paphitis

Czechia

Michael Feuerstein
Michal Havlík

France

Sophie Marc

Germany

Dr Wiebke Baars

India

Dhruv Anand
Kavya Mammen
Pravin Anand
Sampurnaa Sanyal
Udita M Patro

Italy

Fabrizio Jacobacci

Japan

Koichi Nakatani

Netherlands

Herwin Roerdink
Nadine Reijnders - Wiersma
Tjeerd Overdijk

South Korea

Dae Hyun Seo
Won Joong Kim

Spain

Carolina Montero
Eleonora Carrillo
Fernando Ortega
Ignacio Temiño
Rubén Canales

Taiwan

Crystal J Chen
Nick J.C. Lan

Turkey

Özlem Futman
Yasemin Aktas

United Kingdom

Rosie Burbidge

United States

Alan Behr
Tod M. Melgar
Yann Rim