Intellectual Property, Netherlands updates

The considerable value of Max Verstappen's likeness
AKD NV
  • Netherlands
  • June 18 2018

The Amsterdam District Court recently allowed a substantial damages claim following Dutch grocery delivery start-up Picnic's unlawful use of a lookalike of the famous Formula 1 driver Max Verstappen. This case clarifies that a person's right to control the use of their image cannot be violated easily. Although the parody defence is useful, the chance of success is limited if the parody is made in order to achieve commercial gain.

Benelux Convention on Intellectual Property amendments: what do they mean for Dutch trademark holders?
AKD NV
  • Netherlands
  • April 16 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 rules on use and functions of trademark
AKD NV
  • Netherlands
  • February 12 2018

The Supreme Court has upheld an opposition against the refilling of a gas tank bearing the trademark PRIMAGAZ with gas from a third party. The Supreme Court held that where a party uses another's branded packaging for its own goods, it is the same as using the other party's trademark. Finding that the act of filling the tank constituted use of the mark in the course of trade, the court held that the third party had used the PRIMAGAZ mark for commercial gain.

Supreme Court sets standards for direct and indirect infringement of Swiss-type claims
AKD NV
  • Netherlands
  • December 04 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.

Scope of protection of descriptive trade names
AKD NV
  • Netherlands
  • October 23 2017

The Hague Court of Appeal recently rendered its judgment in a case in which the claimant was seeking protection for its trade name, Parfumswinkel, against a competing online perfume shop acting under the trade name Parfumswebwinkel. Although the outcome of this case is acceptable, the reasoning behind it is not necessarily correct. The main issue in the proceedings was whether trade name protection should be granted to trade names that are purely descriptive and lack inherent distinctive character.

District court refers questions on sale of second-hand e-books to ECJ
AKD NV
  • Netherlands
  • August 21 2017

Since the launch of its online second-hand e-book service in 2014, Tom Kabinet's activities have been opposed by Dutch publishers, which have unsuccessfully initiated interim injunction proceedings against the company with regard to e-books that were initially purchased and downloaded lawfully (with the copyright owner's consent). At present, proceedings on the merits of the case are pending before The Hague District Court, which recently decided to refer questions to the European Court of Justice.

Heks'nkaas: an appetising copyright matter
AKD NV
  • Netherlands
  • June 26 2017

The Arnhem-Leeuwarden Appellate Court recently referred questions regarding which kinds of object can be classified as copyrightable works to the European Court of Justice. The case that led to the court's referral addressed the question of whether a certain taste can be protected under copyright law. The particular taste for which protection was sought was a popular cheese product.

Updated indicative tariffs for compensation of legal costs in IP cases – ex officio review by courts
AKD NV
  • Netherlands
  • May 01 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.

Fictive ownership of copyright: rights of use under Copyright Contracts Act
AKD NV
  • Netherlands
  • February 27 2017

The Rotterdam District Court recently rendered its judgment in a matter between two parties that had jointly run a food truck. After having gone their separate ways, the food truck owner continued to operate the business. When the other party continued to use the business's name and logo, the food truck owner demanded that it cease to do so and commenced proceedings to that effect. This seemingly small case is noteworthy, as it demonstrates the consequences of copyright mismanagement.

ECJ rules that Dutch libraries' e-lending falls within scope of EU Rental and Lending Rights Directive
AKD NV
  • Netherlands
  • December 19 2016

The European Court of Justice (ECJ) recently rendered its judgment in the dispute between Vereniging Openbare Bibliotheken and Stichting Leenrecht, which had been referred to it by the Hague District Court. The ECJ considered whether the lending of electronic books by Dutch public libraries falls within the scope of the EU Rental and Lending Rights Directive and is covered by the existing public lending rights regime under the Dutch Copyright Act.

Hyperlink to infringing content may constitute copyright infringement
AKD NV
  • Netherlands
  • October 24 2016

The European Court of Justice (ECJ) recently ruled that hyperlinking to protected works which are freely available on another website without the consent of the copyright holder may be regarded as communication to the public and thus constitute copyright infringement. The ECJ considered that hyperlinking to infringing works constitutes infringement on the condition that the hyperlinker knew or ought to have known the illegal nature of the publication of those works on another website.

No copyright protection for famous Bavaria slogan
AKD NV
  • Netherlands
  • August 08 2016

A Dutch brewing company recently claimed that an internet service provider (ISP) had sought to capitalise on the reputation of its trademarks and benefit from the power of attraction, reputation and prestige of its mark. However, the claims were denied on the basis that the company failed to substantiate the negative effects that the ISP's use of a similar slogan had had on both its mark's distinctive character and its reputation.

Clarification on features of design 'solely dictated' by technical function
AKD NV
  • Netherlands
  • May 23 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.

The portrait of Johan Cruijff
AKD NV
  • Netherlands
  • April 18 2016

Johan Cruijff, the most well-known Dutch soccer player, recently passed away. Aside from his legacy as a professional football player, Cruijff also had a significant impact on Dutch copyright law when he challenged the publication of his image on the ground of commercial interest. In a fundamental ruling, the Supreme Court ruled that in some circumstances, public figures are entitled to a reasonable fee for the commercial use of their portrait.

Assessing the real risk of market partitioning and the burden of proof
AKD NV
  • Netherlands
  • February 15 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.

Communication to the public: how much involvement is required?
AKD NV
  • Netherlands
  • December 14 2015

The Supreme Court has referred another question to the European Court of Justice regarding 'communication to the public' as defined by the EU Infosoc Directive. The referral concerns a dispute between anti-piracy association the BREIN Foundation and two internet service providers hosting the notorious online index of digital content, The Pirate Bay.

Hyperlinks and copyright: courts seek ECJ guidance
AKD NV
  • Netherlands
  • November 16 2015

The relationship between hyperlinking and copyright has been the subject of various court judgments. The outcome of such cases depends on the accessibility of the content, whether the content was uploaded lawfully, whether the link qualifies as a communication to the public and whether the rights holder's permission was obtained. Dutch courts recently made two new references to the European Court of Justice on this issue.

Stolichnaya vodka battle continues: unlawful facilitation of infringement by distributors
AKD NV
  • Netherlands
  • August 31 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
AKD NV
  • Netherlands
  • August 03 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.

Amsterdam District Court denies authority for seizure of Community trademark
AKD NV
  • Netherlands
  • June 08 2015

The Amsterdam District Court recently decided that it was not authorised to grant permission to seize trademarks registered as a Community trademark before the Office for Harmonisation in the Internal Market (OHIM). The court argued that, as OHIM has its seat in Alicante, Spain (ie, outside the Netherlands), the trademarks were outside the court's remit and it therefore had no authority to grant permission for seizure.

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