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 (the BCIP). Additionally, the trade name of a company is protected by national law, in the Netherlands the Dutch Trade Name Act. Further, a company can register a community trademark for the entire EU territory, under the EU Trade Mark Regulation. The Netherlands is a member of the Paris Convention for the 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 is not recognised as a source of trademark rights. Nevertheless, the non-use of a trademark for an uninterrupted period of five years can lead to lapse of the right. Further, the registration of a trademark that is already in use can lead to filing in bad faith, which renders the right null and void.

Benelux law and practice contain a distinction between well-known trademarks to a certain degree, i.e. in the sense that the owner of well-known and registered trademarks can take action against the use of another trademark, on the ground that their trademark is famous/well-known, and their opponent has either taken 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 cannot 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 (C-337/95), the ECJ ruled that trademarks with an “aura of luxury” can be excluded from this exhaustion rule in cases in which the reseller, by the way they are offering the product for resale, causes serious damage to the reputation of the trademark.

Subject to the conditions in Article 2.20 (2)(a–d), a trademark owner is entitled to prevent third party trademark infringement. With the exception of certain specific terms of limitation there is no general fixed time frame for bringing an action based on a registered trademark, but in specific circumstances the trademark holder may be considered to have acquiesced to or accepted a given situation and forfeited his right to file an infringement action.

In most infringement cases, proceedings start with filing a writ of summons. This should include all the infringement arguments and make reference to available evidence to the fullest extent possible. 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 trademark infringement are fulfilled unless there is a valid reason for non-enforcement. Where the trade name is older than the trademark, there is such a valid reason, and the trademark cannot be enforced.

A trademark can be enforced against other distinctive signs when the general requirements for trademark infringement are fulfilled.

A trademark can be enforced against its use in a metatag if the use of the trademark takes unfair advantage or is detrimental to the distinctive character or reputation of the trademark. 

A trademark can be enforced against its unauthorised 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 permitted under Dutch and Benelux law under certain conditions, which include that it does not cause confusion to the public without due cause and it does not take unfair advantage of the reputation of a trademark. In addition, the advertisement cannot cause confusion and goods or services cannot be presented as counterfeit.

Benelux trademark law contains 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.

Luxury brands need to be aware of issues surrounding the registrability and scope of protection of trademarks in the Benelux. It is becoming harder to obtain trademark rights as the Benelux Office for Intellectual Property (BOIP) is becoming increasingly choosy and critical when it comes to distinctiveness, in order to prevent generic words or names being monopolised by individual brand owners. In recent years, it has also become much more difficult to create a distinctive mark by adding a few figurative elements to a non-descriptive word or term. In many cases figurative elements that are not considered special or specifically distinctive will also be held to be generic and not sufficiently distinctive.

On the other hand, the realm of trademarks seems to be growing as the argument that a sign has been used purely as a decorative element is now less easily accepted by the BOIP. This is good news for the owners of trademarks for luxury goods. 

However, in cases where trademarks are mocked or derided by opinion makers and artists, the principles of freedom of information and the press have become important considerations, e.g. in the Dom Perignon case decided by the Benelux Court of Justice (Moët Hennessy v. Cedric Art (Case A2018/1)). This is clearly a development that limits the scope of protection for brand owners. 

Another area of concern is the enforcement options where infringements occur on online platforms, online auctions and social media, particularly in view of the strict privacy rules in place and the limited liability of the providers of online marketplaces. This makes it more difficult to obtain the necessary information on the identity of trademark infringers. 

The principal source of law in the Netherlands is the Dutch Copyright Act. Relevant international treaties are the Berne Convention, Universal Copyright Convention and TRIPS.

When conflicts of laws occur, international treaties take precedence in the Netherlands. 

Dutch law provides for an open list of copyrightable works, permitting 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 the usual requirements for copyright protection, 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 and commercialise is covered by copyright; that is, the right 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 art have a resale right. 

Copyright in a work that has been made according to the design by and under the direction and supervision of another person is considered to vest in the latter. The copyright in works created by employees in principal vest in the employer, unless the parties have agreed otherwise. A legal entity can acquire the rights in works created by others when the works are made public and identified as originating from the legal entity, without naming any natural person as the creator. 

If the work has been created by a non-employee supplier (such as a freelancer), the transfer of the copyright will require a specific copyright assignment agreement. 

For a copyright assignment agreement to be valid it must be in writing and signed by both parties. The Copyright Act now also contains provisions on agreements with authors (this has been the case since the implementation of new legislation in 2015). The author has the right to receive fair remuneration. Further, if terms imposed on a creator are unreasonably onerous, it is possible for them to be nullified. 

The author of a work has moral rights. An author can only partly transfer or waive their moral rights. The right to attribution can be waived. The right of the author to oppose alteration of the work can only be waived insofar as it is not unreasonable. The right to oppose any distortion, mutilation or other impairment of the work that could be prejudicial to the honour or reputation of the author or to their dignity as an author cannot be waived.

Copyright protection in the Netherlands expires 70 years after the maker’s 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 design are considered “works” in the Netherlands and therefore capable of protection by copyright if they meet certain requirements — 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 if a trademark encompasses a copy of the work, for example in cases of figurative trademarks. Obviously this is only relevant if 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 they can prove that they are 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 copyrighted.

The unauthorised 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 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. In addition, the Dutch courts are used to applying the three-step test of Article 5(5) of the EU Directive on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society (the Infosoc Directive), which says that the application of a limitation should not conflict with a normal exploitation of the work and should 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 not abuse their right. There is a general statute of limitation for tort actions of five years after the occurrence of the infringement or five years after the right holder has become aware of the infringement and the wrongdoer. 

Dutch courts are moving towards higher thresholds for affording copyright protection in relation to designs of products. This development is relevant for manufacturers and designers of luxury goods, as they might see a lessening of the number of designs that will be afforded protection on the basis of copyright. 

As with trademark holders, copyright owners need to be aware that where their work has been mocked or derided, the courts take into consideration the principles of freedom of information and the press when deciding disputes (see Section 1.3, above). 

As with trademark infringement, another area of concern is the enforcement options where infringements occur on online platforms, online auctions and social media, particularly in view of the strict privacy rules in place and the limited liability of the providers of online marketplaces (see Section 1.3, above).

In general, there is a trend to grant lower cost awards to intellectual property right holders, which makes it more costly for copyright owners to take infringement action. This also applies in relation to trademarks and designs.

Principal sources of law and regulation related to designs are the BCIP (at Benelux level) and the Community Design Regulation (at EU level). Further, TRIPS and the Paris Convention are relevant sources of law, as are the Hague Agreement and the Locarno Agreement. 

The Paris Convention and TRIPS have priority in the event of conflicting laws. 

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, colours, shape, texture or materials of such products or their 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 their function as an employee. 

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 they continue 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; only the right to attribution can be waived.

Registration and protection last for five years after the application date, and can be extended by consecutive terms of five years, to a maximum of 25 years. 

Unregistered design protection (only available at EU level) lasts for three years.

New digital technologies are having an increasing impact on the protection of rights in relation to luxury brands and luxury goods.

The advent and development of AI technology is impacting and will continue to impact all sectors of intellectual property. With respect to trademarks, it is impacting areas such as trademark clearance and other types of relevant legal research.

The enforcement of rights in relation to non-fungible tokens (NFTs) has become easier with the ability to embed metadata and licensing terms directly into tokens, allowing creators to specify how their works can be used and by whom.

Blockchain technology is very beneficial for enhancing the transparency and traceability of designs and copyright protected works, which allows designers and other artists to protect their intellectual property more effectively. 

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 trade name since these rights do not cover what is covered by design protection.

A design can be enforced against its unauthorised 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 analogue world or on other media platforms.

Designs can 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 conflict with the principle of 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 the right holder 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 ensure they do not abuse their right. There is a general statute of limitation for tort actions of five years after the occurrence of the infringement or five years after the right holder has become aware of the infringement and the wrongdoer.

A design holder in the Netherlands can claim design infringement and copyright infringement and/or unfair competition arising out of the same set of facts in the same action. In such cases it is 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.

Luxury goods are typically the kind of products that are eligible for multiple forms of protection, such as trademark, design rights and copyright. Each of these protection systems has its own advantages and drawbacks, so it is always a challenge to make the right choice when it comes to obtaining protection.

Design rights seem to have become less popular as it is more difficult to assess the value of design rights in advance than it is for copyrights and trademarks.

A particular area of concern is how to define the interested circle or the relevant public or part thereof, which can sometimes be decisive for the outcome of a design right infringement case. There are some decided cases from Dutch courts that call for a quite specific approach on this subject, which may be interesting for owners of design rights for luxury goods. It has been held that the more specific the target group that is viewed for the purpose of determining the relevant public or part of it, 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 of interest and which offers a brighter perspective for owners of design rights is the protection afforded to parts of products, such as the shape of a specific part of the hood of the car, which increases the ability of manufacturers of luxury goods to prevent the supply of non-original parts (see the ruling of the CJEU in Ferrari v. Mansory (C-123/20)). 

Further, in the same way as for trademarks and copyright, an area of concern for owners of design rights is the enforcement options for infringements that occur on online platforms, online auctions and in social media, in particular given strict privacy rules and the limited liability of the providers of online marketplaces, which makes it more difficult to obtain the necessary information on the identity of trademark infringers. 

The law in the Netherlands does not recognise the right of an individual to control the commercial use of their name, image, likeness or other unequivocal aspects of their identity. However, a person who has been portrayed has a so-called portrait right, a right to privacy and personality rights.

No additional conditions exist to “own” a portrait right. The individual must show they have a reasonable interest to invoke their portrait right (see Section 4.3, below). 

In considering whether the right of publicity of the copyright owner survives the death of the portrayed individual, Dutch copyright law distinguishes between two different situations:

• If the picture was commissioned, the portrait cannot be exploited without prior consent of the surviving relatives for a period of 10 years. After that period, the portrait can be exploited without such consent.
• If the picture was not commissioned, surviving relatives can only invoke the portrait right if they have a reasonable interest. If they lack such an interest, they must consent to the portrait being exploited, regardless of whether 10 years have passed. An individual cannot assign their portrait right in whole or in part. They can consent to the exploitation (i.e. publication) of their portrait, and the portrait cannot be exploited without such consent if the portrait was commissioned. If the portrait was not commissioned, it may be published, unless the individual that was portrayed or their surviving relatives have a legitimate interest. A(n) (exclusive) licence/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 by drawing up a licence agreement.

Like any agreement, a licence or consent may be terminated by revoking or withdrawing it. 

In the event of the death of the licensor, the agreement may continue (depending on its terms) and it will be up to the heirs to decide for how long the portrait right can continue to be exploited.

In the event of the death of the assignor, the agreement will continue unless it includes a clause which provides that the death triggers an option to terminate the agreement.

The law states the surviving relatives (as mentioned above) can invoke portrait rights individually.

After the death of the person portrayed, only their surviving relatives can oppose the use. Eligible surviving relatives include the spouse, registered partner, parents, and children of the person portrayed.

Celebrities and others can face difficulties when attempting to assert their portrait rights while collaborating with luxury brands. These rights are typically established through agreements, wherein a celebrity grants consent for publication, thereby also waiving the right to object. If the celebrity later reconsiders, they are consequently unable to exercise their portrait rights.

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 the 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 use the defence that consent was given by the person portrayed, or by arguing that the person portrayed has no reasonable interest or “provoked” the disclosure. 

Product placement is not allowed in the media offerings of public media organisations, which are partially funded by the state. 

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 Dutch Media Authority’s Policy rule on classification of commercial media services on demand. 

Product placement in commercial media 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 programmes, programmes intended to inform consumers objectively and impartially about products or services, programmes of a religious or spiritual nature, and programmes intended for children under 12 years of age. The placement of products within a programme may only occur if the editorial rules of the institution showing the programme include safeguards for editorial independence. Further, product placement is not permitted for medicinal products, medical treatments, nor for alcoholic beverages between the hours of 6:00 AM and 9:00 PM. 

In the event that a party fails to perform the agreement, the brand owner may terminate the agreement or file a claim for the agreement to be dissolved. They may also claim compensation for damages as a result of the breach of contract.

The implementation of the EU Audiovisual Media Services Directive in the Dutch Media Act may lead to difficulties for luxury brands. All economic services that have the main purpose of providing videos that have a mass media character, providing a catalogue through which the videos are ordered, and having editorial responsibility are to be regarded as commercial media services. As a consequence, channels on video platform services are more likely to be subject to the product placement regime of the Dutch Media Act. 

Laws regarding the right of 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 cannot violate EU competition law. The CJEU has formulated the criteria that a selective distribution system must meet. 

A prohibition on selling below a certain price is not allowed, as it is considered a hardcore restriction of competition. A prohibition on selling outside of a specific time period is not a hardcore restriction and may be allowed if it does not have anticompetitive effects.

A prohibition on buying 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 anticompetitive effects.

Stipulated penalty clauses may be included in all sorts of agreements, including distribution agreements. Under Dutch law such clauses are not interpreted purely linguistically, but also by taking into account the intentions of the parties to the contract.

Luxury brands have unique concerns regarding the secondary market, such as resale, and with third-party providers, such as repair and reconditioning services. 

When physical products are resold, the trademark owner cannot simply take enforcement action against the new owner of the second-hand product. This is known as exhausted goods, to which the regulation of Article 15 UMVo applies. However, there is an exception to this rule; the trademark owner may oppose resale if there are legitimate reasons, especially if the condition of the products has changed or deteriorated after they were placed on the market. In such cases, the reduced quality would detract from the trademark. The exact definition of legitimate reasons remains unclear, as this matter is currently under consideration by the CJEU.

Another problem is the use of the brand name of luxury brands by third-party providers in their domain names. A reseller may use the trademark in advertisements in a general sense for exhausted goods under certain conditions. 

Inadmissible trademark use occurs only if there is a risk of creating the impression among the public that there is a commercial connection between the reseller and the trademark owner, or if unfair advantage is taken or detriment is caused to the distinctive character or reputation of the trademark. The Dutch Supreme Court ruled that this is not the case when a reseller uses a “word cloud” of well known trademarks on its packaging (Supreme Court 24 February 2023, Coty/Easycosmetics).