1 . Trademark
1.1. Sources of law
The Netherlands is a member of the Benelux union, along with Belgium and Luxembourg. Registered Benelux trademarks are protected by the Benelux Convention on Intellectual Property Rights. Additionally, the trade name of a company is protected in the Dutch Trade Name Act. Furthermore, a company can register a community trademark for the entire EU territory, under the EU Trademark Regulation. The Netherlands is member of the Paris Convention on Protection of Industrial Property, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), as well as the Madrid Agreement and Madrid Protocol.
In the Benelux, use as a source of trademark rights is not recognized. Nevertheless, the non-use of a trademark for an uninterrupted period of five years can lead to lapse of the right. Furthermore, the registration of a trademark that is already in use can lead to filing in bad faith, which renders the right null and void.
1.2. Substantive law
Benelux law and practice contain a distinction regarding well-known trademarks to a certain degree, in the sense that the owner of well-known and registered trademarks can take action against the use of another trademark, on the grounds that their trademark is famous/well-known, and the opponent either takes unfair advantage of the use or the use is detrimental to the distinctive character or repute of the trademark.
In general, trademarks belonging to the luxury industry do not enjoy a broader range of protection. There is one exception, however: a trademark owner may not oppose the resale of products that have been put on the market in the EU by them or with their consent. However, in its landmark Dior-judgment the ECJ ruled that trademarks with an ‘aura of luxury’ can be excluded from this exhaustion rule in cases in which the reseller causes serious damage to the reputation of the trademark.
The court is not required to use witness statements, affidavit or expert evidence to establish that a trademark is entitled to broader protection. In examining whether the sign has a reputation, the national court must take into account all the relevant circumstances of the case, If, for the purpose of this test, the court deems it necessary to call witnesses and use expert evidence, the court is free to do so.
A trademark can be enforced against a domain name, provided that the use of the trademark takes an undue advantage or is detrimental to the distinctive character or reputation of the trademark.
A trademark can be enforced against a trade name when the general requirements for trademarks infringement are fulfilled without a valid reason. When the trade name is older than the trademark, there is such valid reason, and the trademark cannot be enforced.
A trademark can be enforced against other distinctive signs when the general requirements of trademark infringement are fulfilled.
A trademark can be enforced against its use in a metatag if the use of the trademark takes an unfair advantage or is detrimental to the distinctive character or reputation of the trademark.
A trademark can be enforced against its unauthorized use in social media if there is infringement, which includes the existence of a risk of confusion. Enforcement may only be initiated against the user posting the content, not against the social media network itself.
In general, comparative advertising is allowable under Dutch and Benelux law under certain conditions, namely that it may not cause confusion to the public without a due cause and may not take unfair advantage of the reputation of a trade. Also, that the advertisement may not cause confusion and goods or services may not be presented as counterfeit.
Trademark law in the Benelux has no parody exception.
The slavish imitation of a design can lead to unfair competition and is an unlawful act if the "imitated" product has its own place in the market, the imitation causes confusion among the public, and the imitation was avoidable, without impairing the soundness and usefulness of the product. It is possible to bring parallel proceedings.
Current issues for luxury brands. The registrability and scope of protection of trademarks is a constant theme for vigilance.
On one hand, it is harder to obtain trademark rights as the Trademark Office, the Bureau of Intellectual Property, is becoming more and more choosy and critical when it comes to distinctiveness in order to prevent generic words or names being monopolized by individual brand owners. Nowadays, it is often much more difficult to create a distinctive mark by adding a few figurative elements to a non-descriptive word or term.
On the other hand, the realm of trademarks seems to become bigger as the defence that a sign is purely used as a decorative element is less easily accepted, which is good news for the owners of trademarks for luxury goods.
However, the owners of brands for luxury goods may have to accept that their trademarks are being mocked or derided by opinion makers and artists and in many such cases the freedom of information and press have become important elements in deciding such disputes, for example in the Dom Perignon case decided by the CJEU. This is clearly a development that limits the scope of protection for brand owners.
Another area of concern is the enforcement options for infringements that occur on online platforms, online auctions and social media, in particular the options under strict privacy rules and the limited liability of the providers of online market places, which makes it more difficult to obtain the necessary information on the identity of trademark infringers.
2 . Copyright
2.1. Sources of law
The principal source of law in the Netherlands is the Dutch Copyright Act. Relevant international treaties are the Berne Convention, Universal Copyright Convention and the TRIPS Agreement.
When conflict arises, international treaties take precedence in the Netherlands.
2.2. Substantive law
Dutch law provides for an open list of copyrightable works, listing works in the field of literature, science and art. This includes applied arts.
Objects of industrial, fashion or accessory design are copyrightable if they fulfil certain requirements, for example a work must be amenable to human perception, have its own original character and bear the personal stamp of the creator.
The right to exploit is covered by copyright, that is, to publish and copy the work. Additionally, the author of the work has moral rights, including the right to attribution and the right to oppose alterations of the work. Lastly, makers of graphic works or fine arts have a resale right.
A legal entity may obtain the shareholder’s copyright in its work when works are made public as originating from it, without naming any natural person (the shareholder/employee/contractor) as the creator. However, there must be a connection between the work of the shareholder and the legal entity in order to establish that the work of the legal entity originated in the public domain.
A director can be described as an employee. Only a person who is a director-major shareholder, or occupies a similar position, is not considered an employee.
Suppliers will need a specific copyright assignment agreement to transfer the copyright.
For a copyright assignment agreement to be valid it must be in writing and signed by both parties. Since 2015, the Copyright Act also contains provisions on agreements with authors. The author has the right to receive a fair remuneration. Furthermore, terms that are unreasonably onerous for the creator are open to be nullified.
An author can only partly transfer or waive their moral rights; the right to attribution can be waived. The right of the maker to oppose alteration of the work can only be waived insofar as it concerns changes in the work or in the designation of the work.
Copyright protection in the Netherlands expires 70 years after the makers death or, when no maker is known, 70 years after the first publication of the work.
There are no registration formalities necessary to obtain or enforce a copyright.
Objects of industrial designs are considered ‘works’ in the Netherlands and therefore capable of protection by copyright if they meet certain requirements, such as a work must be amenable to human perception, have its own original character and bear the personal stamp of the creator.
Actual copying is not a necessary requirement to establish infringement (but would constitute infringement per se). Editing or copying in altered form may also constitute infringement provided that the overall impression is the same as that of the original work.
The owner of a copyright may claim infringement of their copyright in case a trademark encompasses a copy of the work, for example in cases of figurative trademarks. Obviously this is only relevant in case the copyright holder and the trademark holder are not the same person/entity.
The owner of an older copyright can invoke the invalidity of a design and/or may claim that a design constitutes a copy of their work and should therefore be deemed to infringe the copyright. The holder of a registered design is also presumed to be the copyright holder. This presumption does not hold up against the actual creator of the work, if he can prove that he is the owner of the copyright.
Copyright cannot be enforced against patent.
A copyright may be enforced against its use in a domain name, trade name or pseudonym, when the name is a copyrighted work, although it might be hard to prove that a single word or short combination of words is original enough to be copyright.
The unauthorized use of a copyrighted work on social media may be considered a publication within the meaning of the Copyright Act.
In terms of comparative advertising if the advertisement discloses a copyrighted work without the consent of the copyright owner, the copyright can be enforced.
Use in parody is an exception under Dutch copyright law, if the use of the work is in accordance with what is reasonably permissible according to the rules of social discourse. When assessing a reliance on the parody exception, a fair balance must be struck between the interests of the copyright holder, on the one hand, and the freedom of expression on the other hand. To this end, all circumstances of the case must be taken into account.
In terms of defences available to alleged infringers Dutch copyright law does not contain a fair use-doctrine. Limitations to copyright are listed exhaustively. Moreover, the Dutch courts are used to apply the three-step test of Article 5 para 5 of the Infosoc Directive which says that the application of a limitation should not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.
Under some circumstances enforcement actions can be held to be abusive and like any right holder a copyright owner should stay away from abusing his right. There is a general statute of limitation for tort actions of 5 years after the occurrence of the infringement or 5 years after the right holder has become aware of the infringement and the wrongdoer.
Current issues for luxury brands. In the area of copyright we see a trend that the Dutch courts are moving towards higher thresholds for affording copyright protection to designs of products. This development is also relevant for manufacturers and designers of luxury goods, as they might see a lessening of the number of designs which will be afforded protection on the basis of copyright.
Furthermore, the manufacturers of luxury goods may have to accept products being derided by opinion makers and artists and, in many such cases, the freedom of information and press have become important elements in deciding disputes, e.g. in the Dom Perignon case decided by the CJEU. This is clearly a development that limits the scope of protection for copyright owners.
Another area of concern is the enforcement options for infringements that occur on online platforms, online auctions and social media, more in particular the options under strict privacy rules and the limited liability of the providers of online market places, which makes it more difficult to obtain the necessary information on the identity of infringers.
More in general, there is a trend to afford lower cost awards to IP right holders, which makes it more costly to pursue infringements of the copyright for their products. This comment is also valid for trademarks and designs.
3 . Design
3.1. Sources of law
Principal sources of law and regulation related to designs are the BCIP at Benelux-level and the Community Design Regulation at EU-level. Furthermore the TRIPS Agreement and the Paris Convention are relevant sources of law, as well as the Hague-Agreement and the Locarno-Agreement.
The Paris Convention and the TRIPS Agreement have priority in the event of conflicting laws.
3.2. Substantive law
Under Dutch and Benelux law, only registered designs are protected. Products protectable by way of registered design are the appearance of objects or parts of products, derived in particular from the lines, outline, colors, shape, texture or materials of the product or its ornaments. Excluded from protection are connectors, interfaces and external features of a product that are determined solely by their technical function.
To obtain a valid registered or, where applicable, unregistered design right, the design needs to be new (novel) and have its own character.
The employer is considered the designer if an employee creates a model or drawing in his function.
If a design or drawing is designed to order, the person who placed the order is considered the designer. This is only the case if the design is ordered to be used in trade or industry, which means the client is considered the designer only if he continues to market the object made according to the design.
A design assignment agreement must be written and cover the entire Benelux-area to be valid. Registration is not required, although a transfer of design rights has no third party effect if it is not registered.
When drafting a design assignment agreement with employees, consultants, shareholders, directors and suppliers it is important to obtain as much information as possible about the existence, validity and title of the rights.
The designer can only partly transfer or waive their moral rights - the right to attribution can be waived.
The registration and the protection lasts for five years after the application date, and can be extended with consecutive terms of five years, with a maximum of 25 years.
An unregistered design protection (at EU-level) lasts for 3 years.
Holders of unregistered designs can only act against deliberate imitation of their design. Holders of registered designs can oppose the use of a product in which the design is incorporated or to which the design is applied and which has the same appearance as the registered design, or which does not produce upon the informed user a different overall impression.
A design can be enforced against a newer design. A design cannot be enforced against a patent, domain name or tradename since these rights do not cover what is covered by design protection.
A design can be enforced against its unauthorized use in social media if the requirements for finding infringement have been met. The publication or offering of a design through social media can constitute an infringement in the same way as in the analog world or other media platforms.
Designs may be used by a person other than the right holder for the purpose of illustration, provided this is compatible with fair trade practices. Use in comparative advertising can, under certain circumstances, constitute an unfair trade practice.
There is no legal parody exception in Benelux design law, but the enforcement of a design against use in parody may possibly infringe free speech.
The exclusive right to a design does not include the right to oppose acts done privately and for non-commercial purposes. A design right cannot be enforced against its use in repair parts or further marketing of products that have been put into circulation in the EU or EEA by them or with their consent.
Under certain circumstances enforcement actions can be held to be abusive and, like any right holder, a design right owner should stay away from abusing their right. There is a general statute of limitation for tort actions of 5 years after the occurrence of the infringement, or 5 years after the right holder has become aware of the infringement and the wrongdoer.
A design holder in the Netherlands may combine design infringement and copyright infringement and/or unfair competition for the same set of facts in the same action. It is therefore not necessary to bring parallel and/or separate copyright infringement and/or unfair competition proceedings as they may be combined in a single proceeding before a Dutch court.
Current issues for luxury brands. Luxury goods are typically the kind of products which are eligible for multiple forms of protection: trademark, design rights and copyrights. Each of these protection systems has its own advantages and drawbacks, so it is always a challenge to make the right choices when it comes to obtaining protection.
Design rights seem to have become less popular as it is more difficult to assess in advance the value of design rights in addition to copyrights and trademarks.
Also, a particular area of concern is how to define the interested circle or the relevant public or part thereof that can sometimes be decisive for the outcome of a design right infringement case. There are some decided cases from Dutch courts which call for a quite specific approach on this subject, which may be interesting for owners of design rights for luxury goods. The reason: the more specific the target group that is viewed for the purpose of determining the part of the relevant public and the general impression conferred on it by a certain design, the bigger the scope of protection for the design in question will become.
Another development that may be viewed with interest and which offers a brighter perspective for owners of design rights is the protection accorded to parts of products, such as the shape of a specific part of the hood of the car, which increases the possibilities for manufacturers of luxury goods against the supply of non-original parts. Such was the ruling in the recent Ferrari case decided by the ECJ.
Furthermore, in the same way as for trademarks, an area of concern for owners of design rights is the enforcement options for infringements that occur on online platforms, online auctions and social media, in particular the options under strict privacy rules and the limited liability of the providers of online market places, which makes it more difficult to obtain the necessary information on the identity of trademark infringers.
4 . Right of privacy, publicity and personal endorsement
4.1. Sources of law
The law in the Netherlands does not recognize the right of an individual to control the commercial use of their name, image, likeness, or other unequivocal aspects of one's identity. However, a person who has been portrayed has a so-called portrait right, right to privacy and personality rights.
4.2. Substantive law
No additional conditions exist to “own” a portrait right. The individual has to satisfy they have a reasonable interest to invoke their portrait right.
In considering whether the right of publicity survives the death of the individual, Dutch copyright law distinguishes two different situations:
- If the picture was commissioned the portrait may not be exploited without prior consent of the surviving relatives within ten years. After that period, the portrait may be exploited without such consent.
- If the picture was not commissioned the surviving relatives also have the right to invoke the portrait right if they have a reasonable interest to do so but are always bound to consent, regardless of whether ten years have passed.
An individual cannot assign their right of publicity in whole or in part. They can consent to the exploitation (i.e. publication) of their portrait, and the portrait may not be exploited without such consent if the portrait was commissioned. If the portrait was not commissioned, it may be published, unless the legitimate interest of the portrayed or their surviving relatives opposes such publication.
A(n) (exclusive) license/assignment to promote or exploit the intellectual property and portrait right of a person can be granted, either on an exclusive basis or on a non-exclusive basis.
For an agreement to be valid the licensee needs to grant a representative power of attorney, ideally by notary deed or draw up a license agreement.
Like any agreement, a license or consent may be terminated by revoking or withdrawing it.
In the event of the death of the licensor the agreement may continue (but depending on its terms) and it will be up to the heirs to decide for how long the right of publicity can continue to be exploited.
In the event of the death of the assignor the agreement will continue, unless it includes a clause under which the death triggers an option to terminate the agreement.
The law states the surviving relatives (as mentioned above) can invoke the portrait rights individually.
After the death of the person portrayed, only their spouse, registered partner, parents and children can oppose the use.
To derive protection from their portrait right, the person portrayed must have a reasonable interest. This may be a commercial interest, but it can also be a non-commercial interest such as the protection of privacy of the person concerned, or their next of kin. Other circumstances that may be taken into account are that there is a danger of mockery, when there is nudity involved, or an undesirable associative or disqualifying context.
The alleged infringer can defend themselves by arguing that consent was given by the person portrayed, or by arguing that the person portrayed has no reasonable interest or "provoked" the disclosure himself.
5 . Product placement
Product placement is not allowed in the media offerings of public media organisations.
Product placement is permitted for commercial media companies, which may include those providing commercial media services on demand if they meet the criteria set out in the Policy rule on classification of commercial media services on demand.
Product placement in commercial media offerings is restricted in several ways. Firstly, the advertisement must be recognizable as such. Secondly, the usage of subliminal techniques is prohibited and thirdly, surreptitious advertising is banned.
For content published after 19 December 2009, additional conditions must be taken into account. Product placement is not allowed in news and current affairs programs, programs intended to inform consumers objectively and impartially about products or services, programs of a religious or spiritual nature, and programs intended for children under twelve years of age. The placement of products within a program may only occur if the editorial statutes of the institution include safeguards for the editorial independence. Furthermore, product placement is not permitted for medicinal products, medical treatments, nor for alcoholic beverages between 06:00 AM and 9:00 PM.
In the event a party fails to perform an agreement, the brand owner may terminate the agreement or file a claim for the agreement to be dissolved. He may also claim compensation for damages as a result of the breach of contract.
Unique concerns faced by luxury brands. The recent implementation of the Audiovisual Media Services Directive in the Dutch Media Act may lead to difficulties for luxury brands. All economical services where the main purpose is to provide videos that have a mass media character, provide a catalogue through which the videos are ordered, and with editorial responsibility are to be regarded as commercial media services. As a consequence, channels on video platform services are more quickly subject to the product placement regime of the Dutch Media Act.
6 . Protection of corporate image and reputation
Laws regarding right of publicity and/or privacy do not extend to legal entities/corporations.
It is possible to include specific clauses in agreements aimed at protecting the corporate image/reputation of one of the parties and this is often done in (selective) distribution agreements or sponsorship agreements. Such agreements may not violate EU competition law. The CJEU has formulated the criteria that a selective distribution system must meet.
The prohibition to sell below a certain price is not allowed, since it is considered a hardcore restriction of the competition. A prohibition to sell outside of a specific time period is not a hardcore restriction and may be allowed if it does not have anti-competitive effects.
The prohibition to buy non original – but otherwise legitimate – spare parts and components is not considered a hardcore restriction, so it may be allowed if it does not have anti-competitive effects.
Stipulated fine clauses may be included in all sorts of agreements, including distribution agreements. Under Dutch law such clauses are not interpreted purely linguistically, but in light of the parties' intentions.