Mr Bram Woltering

Bram Woltering

Updates

Intellectual Property

Court rules on inventor's failure to transfer patent
Netherlands | 21 October 2019

The Hague District Court recently rendered a judgment regarding an inventor's failure to cooperate with the exploitation of his patents. The claimant had alleged that the defendant's refusal to cooperate with the transfer of the patent to a foundation (which would have subsequently granted the claimant a licence) had prevented it from exploiting the patent, including sub-licensing it to third parties.

Unauthorised filing of trademarks by agent or representative
Netherlands | 24 June 2019

The District Court of Gelderland recently rendered a judgment on the subject of unauthorised agent or representative filings. It deemed that a third party was so closely involved in the distribution agreement between two other parties that it could be ordered to transfer the trademarks that it had registered unauthorised, despite the third party arguing that it could not be regarded as an agent, representative or distributor of the two other parties.

Hema crocodile takes bite out of Lacoste trademark
Netherlands | 18 February 2019

The Hague District Court recently issued a preliminary ruling in which it held that Lacoste could not invoke its famous crocodile trademark in order to prohibit the use of a crocodile motif on children's underwear. This preliminary judgment is one of only a few examples in which the use of a sign has been considered purely decorative (and thus could not be perceived as trademark use). Typically, the courts are restrictive in accepting such a defence.

Can directors be held liable for IP infringements?
Netherlands | 06 August 2018

The Hague District Court recently had to assess whether a natural person could be held accountable for a company's trademark and copyright infringement. Although the court could not establish whether the person was an official director of the infringing company, this did not stand in the way of his liability. In accordance with Supreme Court case law, liability can arise where a party plays a substantial part in the policy of a company that acts unlawfully and behaves as if they are a director of the company.

Benelux Convention on Intellectual Property amendments: what do they mean for Dutch trademark holders?
Netherlands | 16 April 2018

On June 1 2018 two protocols that amend the Benelux Convention on Intellectual Property will take effect. The amendments will make it possible for Dutch parties to initiate actions before the Benelux Office for Intellectual Property with regard to the opposition, revocation and cancellation of a Benelux trademark. They will therefore have a significant effect on Dutch revocation and cancellation procedures.

Supreme Court sets standards for direct and indirect infringement of Swiss-type claims
Netherlands | 04 December 2017

The Supreme Court recently rendered a landmark judgment on second medical use claims – more specifically, Swiss-type claims – which have been the subject of significant legal uncertainty throughout Europe. Although the judgment provides welcome clarification on Swiss-type claims with regard to the possibility of indirect infringement and the standards for direct and indirect infringement, some questions still remain.

Updated indicative tariffs for compensation of legal costs in IP cases – ex officio review by courts
Netherlands | 01 May 2017

The indicative tariffs used to determine reasonable and proportionate legal costs in IP cases were recently revised, following the European Court of Justice's judgment regarding the interpretation of the EU Enforcement Directive and the Supreme Court's judgment that judges must decide ex officio on the assignment of the cost of proceedings and the amount thereof. Notably, the category of 'very simple' cases has been introduced, in which only the standard liquidation rates will apply.

Clarification on features of design 'solely dictated' by technical function
Netherlands | 23 May 2016

The EU Community Design Regulation provides that "a Community design shall not subsist in features of appearance of a product that are solely dictated by its technical function". The Court of Appeal of The Hague recently delivered a judgment interpreting when a feature of a model breaches this requirement. The court also suggested that implicit obligations against placing confusing products on the market can arise from a contractual relationship.

Assessing the real risk of market partitioning and the burden of proof
Netherlands | 15 February 2016

A recent interlocutory judgment on assessing the real risk of market partitioning in an unauthorised parallel import case examined the rationale for reversing the burden of proof and whether the risk of partitioning assessment should take place retroactively or not. Rights holders will welcome the judgment because of the high standard it sets for what evidence qualifies as proof of a real risk of market partitioning.

Stolichnaya vodka battle continues: unlawful facilitation of infringement by distributors
Netherlands | 31 August 2015

The latest dispute between Russian state-owned company FKP Sojuzplodoimport and Dutch company Spirits International concerned alleged trademark infringement by Spirits International by using the trademark STOLI for vodka in Benelux. Dutch case law on the issue of unlawful facilitation of trademark infringement is scarce, but in this decision the District Court of The Hague gave some further guidance on the topic.

Copyright Contract Law comes into force
Netherlands | 03 August 2015

The new Copyright Contract Law was recently inserted into the Copyright Act 1912. The amendment aims to strengthen the position of authors, particularly in relation to parties which exploit their works (eg, publishers, film producers and record companies). The new law requires a signed deed in relation to exclusive licences, as well as introducing a section on exploitation contracts into the act.

Litigation

Unauthorised filing of trademarks by agent or representative
Netherlands | 25 June 2019

The District Court of Gelderland recently rendered a judgment on the subject of unauthorised agent or representative filings. It deemed that a third party was so closely involved in the distribution agreement between two other parties that it could be ordered to transfer the trademarks that it had registered unauthorised, despite the third party arguing that it could not be regarded as an agent, representative or distributor of the two other parties.

Hema crocodile takes bite out of Lacoste trademark
Netherlands | 19 February 2019

The Hague District Court recently issued a preliminary ruling in which it held that Lacoste could not invoke its famous crocodile trademark in order to prohibit the use of a crocodile motif on children's underwear. This preliminary judgment is one of only a few examples in which the use of a sign has been considered purely decorative (and thus could not be perceived as trademark use). Typically, the courts are restrictive in accepting such a defence.

Can directors be held liable for IP infringements?
Netherlands | 07 August 2018

The Hague District Court recently had to assess whether a natural person could be held accountable for a company's trademark and copyright infringement. Although the court could not establish whether the person was an official director of the infringing company, this did not stand in the way of his liability. In accordance with Supreme Court case law, liability can arise where a party plays a substantial part in the policy of a company that acts unlawfully and behaves as if they are a director of the company.

Supreme Court sets standards for direct and indirect infringement of Swiss-type claims
Netherlands | 05 December 2017

The Supreme Court recently rendered a landmark judgment on second medical use claims – more specifically, Swiss-type claims – which have been the subject of significant legal uncertainty throughout Europe. Although the judgment provides welcome clarification on Swiss-type claims with regard to the possibility of indirect infringement and the standards for direct and indirect infringement, some questions still remain.

Updated indicative tariffs for compensation of legal costs in IP cases – ex officio review by courts
Netherlands | 02 May 2017

The indicative tariffs used to determine reasonable and proportionate legal costs in IP cases were recently revised, following the European Court of Justice's judgment regarding the interpretation of the EU Enforcement Directive and the Supreme Court's judgment that judges must decide ex officio on the assignment of the cost of proceedings and the amount thereof. Notably, the category of 'very simple' cases has been introduced, in which only the standard liquidation rates will apply.

Clarification on features of design 'solely dictated' by technical function
Netherlands | 24 May 2016

The EU Community Design Regulation provides that "a Community design shall not subsist in features of appearance of a product that are solely dictated by its technical function". The Court of Appeal of The Hague recently delivered a judgment interpreting when a feature of a model breaches this requirement. The court also suggested that implicit obligations against placing confusing products on the market can arise from a contractual relationship.