Appreciation of the validity of trade marks by the judge competent for acts of unfair competition (recent unpublished case law)

25 April 2007

Benoit Van Asbroeck

Some recent decisions of the Courts of Appeal of Brussels and Antwerp have limited the scope for trade mark owners to obtain quick final injunctions using the summary proceedings provided by the Belgian Unfair Competition Act.

Unfair competition is dealt with in Belgium under the Unfair Competition Act. The Unfair Competition Act grants exclusive jurisdiction to the president of the commercial court in particular proceedings traditionally called "summary proceedings" (action en cessation - stakingsvordering).

Summary proceedings are similar to preliminary proceedings. In both cases, the judge may issue an injunction or an order to cease and desist, the proceedings are dealt with in a matter of weeks and the parties can expect a decision after two or three months from the start of the litigation. However, in contrast to preliminary proceedings, summary proceedings are decided on the merits of the case and the court order is final rather than provisional; this is the main difference between the proceedings and also the main advantage of summary proceedings.

Summary proceedings are therefore very popular in Belgium, since in traditional proceedings a judgment is generally handed down after several months if not a year. The disadvantage of summary proceedings is, however, the limited scope of jurisdiction - the judge is allowed to issue only an injunction to cease and desist, and nothing more.

Following confirmation from the Belgian Constitutional Court that the judge in summary proceedings may issue an injunction against Benelux trade mark infringements - despite the explicit exclusion under the Unfair Competition Act of an action based on a trade mark right - trade mark owners now usually choose this procedural path for Benelux trade mark infringement actions.

Recently, the question has been raised as to whether validity arguments can be raised as a defence in such summary proceedings or whether, in view of the limited scope of jurisdiction of the judge in summary proceedings, these arguments should be rejected or stayed pending consideration before a traditional court.

Both the Courts of Appeal of Brussels and Antwerp have ruled several times on this question over the last few months. We summarise these decisions as follows.

  1. It is now clear that questions as to the validity of the trade mark can be raised before the judge in summary proceedings.

  2. Uncertainties still remain, however, in Belgian case law as to whether the judge in summary proceedings may cancel the trade mark if he comes to the conclusion that it is not or no longer valid. Some decisions seem to recognise this possibility (Antwerp, 25 September 2006, 2005/AR/2837, unpublished; Brussels, 7 September 2006, 2005/AR/1528, unpublished), while others expressly exclude it (Antwerp, 2 February 2007, 2006/AR/728, unpublished; Brussels, 30 August 2006, 2004/AR/913, unpublished; Brussels, 30 March 2006, 2005/AR/2666, unpublished), stating that, when the defence submitted to the summary judge counterclaims that the trade mark is invalid, the only option is for such a claim to be dismissed.

In any case, this is a clear signal to trade mark owners that bringing summary infringement proceedings now bears the risk of an invalidity attack. Before starting any litigation alleging trade mark infringement, it is important to ensure that the scope for invalidity arguments, such as those based on non-use, is minimised.