More strategic options for IP owners in the Netherlands

Copyright Wednesday, May 10, 2006 Duncan Bucknell Company

The latest newsletter from the team at Steinhauser Hoogenraad foreshadows some interesting developments in the Netherlands from 1 July 2006.

Take home

Factors including relatively low cost and good prospects of success have meant that the Netherlands is one of the most popular jurisdictions in which to enforce IP rights. The latest round of amendments to the civil procedure will support this trend. They include:

Exp parte interim injunction proceedings.
(An injunction without the defendant having the opportunity to be heard on the application — see below).

Descriptive seizure.
(This is basically a civil search and is similar to (but not the same as) Anton Piller Orders as discussed in the my article of 5 May 2006.)

The patentee may take possession of equipment used to commit patent infringement or demand that they be removed from circulation or have them destroyed.

The patentee may require middlemen who are being used by third parties as part of the infringing activities to cease undertaking such activities.

The new provisions will only apply to proceedings commenced after 1 July 2006.

Comment

Exp parte interim injunction proceedings.

This procedure has been used in Germany for some years and to great effect. Under the German system, the defendant has the opportunity to challenge the grant of the interim injunction within a set period. As pointed out in the Steinhauser Hoogenraad newsletter, the Netherlands version provides for compensation to the defendant should the injunction be revoked.

Descriptive seizure.

This sounds very similar to the Saisie Contrefaçon which is almost always granted at the commencement of patent litigation in France (Belgium and Italy have similar procedures). Click here for a great summary of European procedures for obtaining evidence prior to commencing litigation. (The article is by Jochen Bühling of Krieger Mes & Graf v der Groeben and appeared in iam’s ‘IP Value 2006’).

Possession, removal from circulation or destruction of equipment.

These are common remedies in many countries today.

Remedies against middlemen

This presents an intriguing possibility as the Court may in many circumstances be ordering a prohibition (or injunction) against a person (or company) who is not party to the proceedings.