1. Patents and Trade Marks: Belgian Law on injunctive relief Eric Laevens

2. 1. Stop infringer from selling and marketing? Patent: - Belgian Patent Act of 28 March 1984 on Patents for inventions - European Patent Convention (EPC) - München 29 Nov. 2000 - Patent Cooperation Treaty (PCT) - Washington 19 June 1970 Trade Mark: -Benelux Intellectual Property Convention (Trade Marks and Designs) - The Hague 25 Febr. 2005 -Regulation 40/94 on the Community Trade Marks - 20 Dec. 1993

3. 2. Essential factors for injunctive relief - Initiated by writ of summons - Plaintiff must demonstrate: 1. he/she is the holder of a valid patent/trade mark 2. there are credible indications of infringement 3. the balance of interests between the parties is in favor of granting an injunction 4. the request meets the urgency threshold: immediate measures have to be taken in order to avoid irreparable harm to the plaintiff

4. 2. Essential factors for injunctive relief - Ex parte relief possible if measures are “absolutely necessary’ (art. 584 Belgian Judicial Code) : 1. given the circumstances of the case, the urgency is so exceptional that the delay of action is likely to cause irreparable harm OR 2. considering the nature of the measures sought

5. 3. Defenses Patent: - to question the validity of the plaintiff’s patent - to argue that there is no infringement: 1. no reproduction of the essential features of the invention 2. not qualified as an infringing act (art. 27 Belgian Patent Act) - exceptions (art. 28 Belgian Patent Act) 1. carried out privately and for non-commercial purposes 2. patent invention for scientific purposes - claim of prior personal use of the invention (art. 30 Belgian Patent Act)

6. 3. Defenses Trade Mark: - to question the validity of the plaintiff’s trade mark - exceptions (art. 2.23.1 + 2.23.2 Benelux Conv.) 1. informative or necessary use to differentiate or state the origin of goods and services 2. prior local use

7. 4. Timing Usually heard within 2 to 6 months Depends on the complexity of the matter, the strength of the defense, the parties’ initiative in commencing and pursuing the proceedings and their cooperation in preparing the case

8. 5. Costs? Depending on the complexity of the evidence of infringement Starting from € 20 000

9. 6. Other resources needed to obtain injunction Provision of costs Patent - in case of an EU patent the deposit of a translation of the registration of the patent in one of the national languages Trade Mark - certificate of CTM/Benelux TM - if registered > 5 years ago evidence of use

10. 7. What about the harm already caused Damages only requested in the scope of infringement proceedings on the merits  True compensation for the damage incurred: 1. lost profit 2. losses sustained

11. 8. Other options - inter partes infringement proceedings based on merits - descriptive seizure proceedings (art. 1369bis Belgian Judicial Code) - border stoppage measures (regulation 03/1383/EC of 22 July 2003) - arbitral binding decision (art. 1676 Belgian Judicial Code) - mediation proceedings (Act of 21 Feb. 2005) - criminal proceedings (Act of 15 May 2007)

12. 9. Possible Remedies Patent (arts. 52 §4 + 53 Belgian Patent Act) - injunction to stop using, selling, offering for sale or manufacturing (+ under the provision of civil penalties) - confiscation of the infringing products and of the means and instruments specifically aimed at manufacturing them (infringer bad faith) - payment of damages to the patent holder - publication of the judgment (at infringer’s expense)

13. 9. Possible Remedies Trade Mark (arts. 2.21-2.22 Benelux Conv./arts. 98-99 Reg. 40/94) - perpetual injunction to extract all the infringing goods out of the commercial traffic + if needed the confiscation of the infringing products and of the means and instruments specifically aimed at manufacturing them - preliminary injunction to stop using, selling, offering for sale or manufacturing (+ under the provision of civil penalties) - oblige infringer to give all the information about the provenance and the distribution network of the goods and services used to infringe - payment of damages to the trade mark holder - publication of the judgment (at infringer’s expense)

14. THANK YOU