The legal toolbox

1. Opposition

• This tool can be used in case of recently granted patents, younger registered trademarks and design models
• First instance is brought before the office / granting institution
• Keep in mind that there are strict deadlines.

2. Preliminary hearing of witnesses, conservatory (third-party) seizure, etc.).

• These requests are usually filed prior to court proceedings in the Netherlands.
• Requests are to be filed with the court.
• Provisional injunctions must be followed by case on the merits.
• There is a risk that a claim for damages is awarded if it is (later on) ruled to be non-infringing.

3. Border seizure

• Applicable in case of infringement of IP rights, topographies and semiconductors (microchips), utility models, tradenames, protected indications of origin.
• National or EU wide requests can be made.
• Requests are to be issued with customs.
• A (positive) decision will be valid for 1 year.
• As customs apply a narrow scope of investigation/action, the request must be very specific.
• There is a chance that an infringement procedure before the court must follow.

4. Cease and Desist letter / pre-court settlement

• Sending a letter demanding that the infringement cease and desist, possibly requesting additional information or making demands on the basis of which a settlement can be reached.
• In certain cases, sending a cease-and-desist letter is important for claiming damages.

5. IP specific provisional injunctions (1019 Rv)

• These measures can only be used when enforceing IP rights (i.e., this does not include unfair competition, and they cannot be used when claiming invalidity or when initiating opposition proceedings).
• Under conditions, provisional injunctions can also be applicable when enforcing (foreign) IP rights in other member states.
• Provisional indjunctions are usually made prior to court proceedings.
• Provisional indjunctions are to be requested with the court.
• Examples are measures for protection of evidence, seizure, request for description or to draw samples, ex parte decision, requesting third party information or witness hearing.
• The court will always weigh the interests of the parties involved, among other things to prevent fishing expeditions.
• Provisional injunctions must be followed by case on the merits.
• There is a risk a claim for damages is awarded if (later on) it is ruled to be non-infringing.

6. Takedown procedure

• In case of online infringement on (large) web portals.

7. Nullity proceedings

• Applicable in case of resembling trademarks and designs.
• First instance can be with the office / granting institution.

8. Infringement proceedings

• A large variety of claims is possible, including cross border injunctions.

9. Domain name disputes

• WIPO arbitration procedure or court case.

10. Interlocutory proceedings

• In interlocutory proceedings, only a preliminary injunction can be claimed.
• Interlocutory proceedings must be followed by a case on the merits.
• Urgency is required.

11. Other proceedings

• Next to IP rights, cases may be based on wrongful act, breach of (secrecy) agreement etc.

12. Reporting injustice

• Beware of: counter claims (nullity), damage claims, awarded costs, ’wapperverbod’ (flapper ban).