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Protection of luxury brands in the Netherlands

The mere branding of luxury goods does not suffice to protect the luxurious image of goods. Registration, enforcement and contracts are key...
 
Joost Becker
16 June 2023
16 June 2023

Luxury brand protection

The Netherlands is in the EU and Benelux trade mark system. Trade mark registration is possible for signs that distinguishes the goods and/or service of the trade mark holder from other goods. Trademark law provides for extensive protection of reputed or well-known brands, such as luxurious brands. Also, different forms of effective enforcement are possible for the protection of luxury brands, including through litigation and contractual measures.  

Trade mark law

The Benelux Convention on Intellectual Property (BCIP) as well as the European Union Trademark Regulation (EUTMR) apply. Trade mark protection even applies world wide, as the Paris Convention on Intellectual Property states state ‘[e]very trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union’.

Under the trade mark laws applicable in the Netherlands, protection is offered to many different signs, notably renowned words, famous logos, highly recognizable shapes, positions or trademark patterns and even unique store lay outs.

As such, trademark registration also protects the luxurious image of such brands.

Protection of reputation

The protection of the reputation of luxury brands is possible under the Benelux Convention, primarily by invoking article 2.20 section 2 sub c BCIP.

This means that the proprietor of that registered luxury brand shall be entitled to prevent all third parties not having his consent from using any sign where such sign

“is identical with, or similar to, the trademark irrespective of whether it is used in relation to goods or services which are identical with, similar to, or not similar to, those for which the trademark is registered, where the latter has a reputation in the Benelux territory and where use in the course of trade of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark”

One example of such protection is the free-riding on the coat-tails of such a reputed trade mark. In principle all luxury brands can invoke such form of protection, for instance in litigation.

Unfair advantage of the distinctive character or the repute of the earlier mark will take place, where there is an attempt at clear exploitation and free-riding on the coat-tails of a famous mark and that taking unfair advantage of that distinctive character or repute. The risk of free-riding is the risk that the image of the mark with a reputation and/or a well known mark – casu quo the characteristics which it projects – will be transferred to the goods, with the result that the marketing of those goods will be made easier by that association with the earlier mark with a reputation.

Use of a luxury trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered to be well known, is also prohibited.

Counterfeit luxury goods

Luxury brands are prone to counterfeit, by which the brand image is also copied in an unauthorised manner. These import goods are mostly offered on online sales platforms, and advertisements on online marketplaces, some even as a replica.

Studies show that mostly fashion marks, including perfumes, are the most counterfeited luxury brands. However, also watches, high end consumer products, electronics and appliances are also copied.

Protection against counterfeit luxury goods is offered by the Regulation on customs enforcement of intellectual property rights. Under counterfeit rules, through the customs authorities, it is possible to seize and destroy these products.

Licensing luxury brands

In luxury branding, the quality of the goods is of course in the production of the original goods and the aura that they convey. The European Court of Justice confirmed that luxury brands are protected if damage is shown to the "allure and prestigious image which bestows on those goods an aura of luxury". In doing so, the court found that the quality of luxury goods is in their material characteristics, as well as the image which bestowed on them an aura of luxury. Impairment of that "aura" to affect the perception of the quality of those goods.

This means that a trade mark proprietor can invoke their rights against a licensee who contravenes a provision in a licence agreement, prohibiting - on grounds of the trade mark’s prestige - sales to discount stores. Also, other acts may be liable to impair the brand image, or that damages the allure and prestigious image which bestows on those goods an aura of luxury.

This also means that strict provisions in licence agreements have to be in place to show which acts require the consent of the proprietor of the trade mark. Where a licensee puts luxury goods on the market in contravention of such a provision in a licence agreement, the proprietor of the trade mark can rely on such a provision to oppose a resale of those goods damaging the reputation of the trade mark.

Our practice

Our firm provides comprehensive services for the protection of luxury brands. We advise on trade mark portfolio’s. We also specialize in litigation for the protection of luxury brands through enforcement measures, such as sending demand letters, cease and desist letters, taking anti-counterfeit measures, including the seizure of infringing goods. Our a track record in intellectual property litigation is backed by positive judgments in infringement cases, helping parties to act against infringing products on the market, including injunctions, ex parte rulings and in parallel import cases. Moreover, our intellectual property team is specialized in license agreements, and distribution agreements. We are ranked in the Legal 500 and WTR.  

Please contact us should you have any questions whatsoever.

Joost Becker, IP-lawyer