Preliminary observation The rates set for the fines discussed below must be multiplied by an inflation-adjusted coefficient, which varies according to the date of the legislation (or the amended Article of the Criminal Code) which stipulates the fine. Accordingly, the amount of the fines provided for by the amended Law of 28 March 1972 on copyright and by the Law of 23 September 1975 on neighbouring rights should be multiplied by 20. A multiplier of 400 should be used in the case of fines provided for by the Law of 28 March 1883 on trademarks. 1. Copyright and neighbouring rights Copyright See Section VII of the amended Law of 29 March 1972 on copyright.28 Article 30: "The offences referred to in the preceding Article29 shall be punished with a fine of 2,501 francs to 100,000 francs. The convicted party shall be sentenced to confiscation of infringing works or objects and of plates, moulds or matrices and other implements that have directly served to commit such offences." Article 31: "In the case of a performance or recitation given in breach of copyright, the proceeds may be seized by the judicial police as being objects derived from the offence and shall be awarded to the plaintiff as constituting part of the damages due to him, but solely in proportion to the share that his work represented in the said performance or recitation." Article 32: "Any wilful or fraudulent affixation on a literary or artistic work of the name of the author, or of any distinctive sign adopted by him to identify his work, shall be punished with imprisonment for a term of three months to two years and a fine of 2,501 francs to 20,000 francs, or with one of those penalties only. Confiscation of the infringing objects shall be ordered in all cases. Those who knowingly sell the objects designated in the first paragraph or display them for sale, stock them for the purpose of sale, import them or circulate them on the territory of Luxembourg for commercial purposes shall be liable to the same penalties." Article 33: "Article 191 of the Criminal Code is replaced by the following provisions: ‘Any person who either affixes or causes to be affixed, by addition, excision or any alteration whatsoever, on manufactured articles the name of a manufacturer other than the one who is the author thereof, or the business style of a factory other than that of the manufacturer, shall be punished with imprisonment for a term of one month to six months and a fine of 2,501 to 50,000 francs or with one of those penalties only. The same penalty shall be imposed on any merchant, factor or retailer who has knowingly displayed objects marked with fictitious or altered names for sale or imported or circulated such objects.'" Neighbouring rights Article 15 of the Law of 23 September 1975: "Wilful or fraudulent infringements of the rights referred to in this Law shall be punished with a fine of 5 to 100,000 francs and a term of imprisonment of one to six months, or with one of those penalties only. In the event of a further conviction within five years, the penalties shall be doubled. Those who knowingly import copies of phonograms made without the consent of their producer, or distribute them to the public, hold them in their possession or display them for sale on the territory of Luxembourg, shall be liable to the same penalties. Confiscation of counterfeit discs and of articles that were used or intended to commit the offence, even when they are not considered to be the property of the convicted person, shall be ordered against the latter. (...)" 2. Trademarks Article 14 of the Law of 28 March 1883 on trademarks: "A sentence to a term of imprisonment of eight days to six months and to a fine of 26 francs to 2,000 francs, or to one of these penalties only, shall be imposed on: (a)Anyone who has infringed a trademark and anyone who has made fraudulent use of a counterfeit trademark; (b)anyone who has fraudulently affixed to or made to appear on products they have produced or in which they trade a trademark belonging to another, whether by addition, excision or any alteration whatsoever; (c)anyone who has knowingly sold, placed on sale or circulated products bearing a counterfeit trademark or a trademark fraudulently affixed to them." In the event of a further conviction within five years, the sentence shall be one of one year's imprisonment and a fine of Lux F 4,000 francs, or one of these penalties only. (Article 16) Article 17 of the same Law: "All or some of the products bearing a counterfeit or fraudulently affixed trademark, together with the instruments and implements used specifically to commit the offence, may be confiscated if they are the property of the convicted person." (Article 17) Unfair competition Article 23 of the Law of 27 November 1986 regulating certain commercial practices and sanctioning unfair competition provides that "any failure to comply with the injunctions or prohibitions set out in a decision not subject to appeal or challenge under Article 2130 shall be punished with a fine of 10,000 to 2 million francs.31" The same Article makes the same penalty applicable to "anyone who, in the exercise of his activities after having incurred a suspension or prohibition order, commits for a second time within a period of five years from the last judicial decision not amenable to appeal or challenge: (1) an act of unfair competition of the same type or (2) a similar breach of the provisions of Articles 1 to 15." Article 24 of the above-mentioned Law states that the provisions of Book 1 of the Criminal Code and those relating to extenuating circumstances shall be applicable to offences covered by the said Law. It adds that "confiscation of assets involved in the offence shall be optional."
[Answer 5: 1. INJUNCTIONS (a)General rules Article 21 of the Law regulating certain commercial practices and sanctioning unfair competition of 27 November 1986, as amended by the Law of 14 May 1992, provides that: "The President of the District Court Division dealing with a commercial case at the request of any individual, a professional group or a consumer organization represented on the price board shall order the cessation of acts contrary to the provisions of Articles 1 to 20 of this Law." Such proceedings on the merits, also known as action for suspension, are instituted and tried in the same way as urgent proceedings, but with no right of opposition. (b)Specific rules 1.Trademarks The action for suspension referred to under (a) is not applicable to infringements of trademarks. However, this exclusion does not extend to cases of unlawful use of a trademark falling short of infringement (i.e. cases covered by Article 13A.1(c) and (d) of the Uniform Law). 2.Patents Article 79.3 of the Law of 20 July 1992 provides that the President of the Court may, at the request of any person authorized to bring an action for infringement under the said Law, issue an interim order requiring any person against whom strong evidence of infringement exists provisionally to cease the activity considered as constituting infringement. Moreover, Article 80.4(a) provides that "if the action for infringement is recognized as well founded, the District Court shall order the infringer or, if need be, more than one infringer jointly and severally: (a) to cease the infringement;". 3.Industrial designs Article 14.5 of the Uniform Benelux Designs Law provides that "acts which would only constitute infringement of a design may not be the subject of an action under the legislation on unfair competition". 2. DAMAGES, INCLUDING RECOVERY OF PROFITS, AND EXPENSES, INCLUDING ATTORNEY'S FEES (a)General rules Pursuant to Articles 1382 and 1383 of the Civil Code, the court may order anyone who causes damage to another to provide compensation (damages), irrespective of whether the damage was caused by fault or by negligence. This fundamental principle obviously applies also in IPR infringement cases. As regards costs and expenses, Article 130 of the Code of Civil Procedure provides that the losing party will be ordered to pay the costs, unless a specific and reasoned court decision leaves another party to bear all or part of the costs. There are five categories of costs: bailiff's fees, registry fees, taxes and duties, lawyer's fees and consultant expert fees. Article 133-1 of the Code provides that "where it appears inequitable to leave one party to bear expenditure it has incurred that is not included in the costs, the court may order the other party to pay an assessed sum". This provision covers attorney's fees in particular. (b)Specific rules 1. Copyright and neighbouring rights The procedure and method of compensation are those of the ordinary law relating to liability for negligence. The court may therefore order the infringer to pay damages to the holder of the right by way of compensation for the damage caused. Moreover, Article 46 of the amended Law of 29 March 1972 on Copyright stipulates that, in the event of any violation of the provisions on the resale royalty right, "the acquirer and the law officials may be held jointly liable for damages which shall inure to the benefit of the persons entitled to the resale royalties". The last paragraph of Article 37 of the amended 1972 Law provides that "in the case of acts that give rise to monetary receipts, the President may order the sequestration of the monies by a bailiff appointed by him". 2.Patents Article 80.4(b) of the Law of 20 July 1992 provides that, if an action for infringement is recognized as well-founded, any infringer shall be ordered to pay damages to compensate for the damage caused to the plaintiff. 3.Trademarks Article 13.A.3 of the Uniform Law provides that, without prejudice to the application of the ordinary law on civil liability, the proprietor of a mark may, by virtue of his exclusive right, claim indemnification for any damage sustained by him as a result of unlawful use of the mark. It should be noted that Article 12.A in fine stipulates that "damages can on no account be awarded for facts which occurred prior to filing". Moreover, Article 13.A.4 of the Uniform Law gives the proprietor of a mark the option of instituting proceedings for surrender of the profits derived by the infringer from unlawful use of the mark together with submission of the relevant accounts. The Law provides that "the court shall refuse the petition if it holds that the use was not made in bad faith or that the circumstances of the case do not call for such sentence". 4. Industrial designs Article 14.2 of the Uniform Law provides that the proprietor of a design deposit may claim compensation for any damage caused to him by unlawful use of his design, if such use occurred after publication of the deposit, sufficiently disclosing the characteristics of the design, unless the infringer was aware of the deposit's existence. 3. DESTRUCTION OR OTHER DISPOSAL OF INFRINGING GOODS AND MATERIALS/ IMPLEMENTS FOR THEIR PRODUCTION 1. Copyright and neighbouring rights Articles 37 et seq. of the amended Law of 29 March 1972 on Copyright provide for the seizure of infringing works, also called seizure-description. Under this procedure, copyright owners may, after obtaining authorization, upon application, from the President of the Court of First Instance at the place where the infringement occurred, arrange for one or more court-appointed experts to make a surprise visit to the premises of the infringer in order to draw up a description of the allegedly infringing objects or of the acts of infringement and the implements that served directly for the performance of those acts. The President may use the same order to forbid the holders of infringing objects to part with them, assign a custodian to the premises where the said objects are stored, or even place the objects under seal. [See the reply to question No. 12.] 2. Patents Points 1 and 2 of Article 79 of the Law of 20 July 1992 provide that: "1.Persons authorized to institute proceedings for infringement pursuant to Article 7715 may, on request, be authorized by the President of the District Court to arrange for one or more sworn experts appointed by the President to draw up a detailed description of allegedly infringing objects and of the instruments used to commit the alleged infringement, irrespective of the identity of the owner of the said objects and instruments. 2.The persons in question may, by virtue of the same order of the President or a subsequent order, be authorized to arrange for a bailiff, assisted by one or more previously appointed experts, to attach the objects and instruments referred to in paragraph 1 (...). Custody of the aforesaid objects and instruments may be entrusted to a custodian appointed by the President." Article 81 of the Law of 20 July 1992 lays down the confiscation procedure, as follows: "1.At the request of the injured party, and provided that the measure proves necessary to uphold the ban on continued infringement, the court may order the confiscation, on behalf of the plaintiff, of manifestly infringing objects in the possession of the infringer on the date of entry into force of the ban, and, where appropriate, of the facilities or means specifically intended to commit the infringement. Account shall be taken of the value of the infringing objects in the calculation of the compensation awarded to the beneficiary of the judgement. 2.Confiscation for the benefit of the plaintiff may be ordered even if the objects in question have been attached on the strength of a writ of execution, or if the defendant is bound by bankruptcy procedure or other collective liquidation arrangements. 3.At the request of the injured party, and provided that the measure proves necessary, the court may order the destruction, at the cost of the infringer, of manifestly infringing objects and of the instruments, facilities or means specifically intended to commit the infringement. 4.The confiscation for the benefit of the plaintiff provided for in paragraph 1 may relate wholly or in part to immovable property, despite non-registration of the claim at the mortgage registry." 3. Trademarks Article 13bis.1 of the Uniform Law provides that "the proprietor of a mark shall be entitled to claim ownership of any movable assets that have infringed his right or of goods that have served to produce such assets, or to demand that they be destroyed or rendered unusable. Such claim may also be asserted with regard to the amounts of money presumed to have been obtained as a result of the infringement of the right in the mark. The petition shall be rejected if the infringement was not made out in bad faith". Paragraph 2 of the same Article stipulates that the provisions of domestic law relating to withholding measures and enforcement of court decisions shall be applicable. 4. OTHER REMEDIES Publication of rulings Pursuant to Article 1036 of the Code of Civil Procedure, the courts may order publication of their rulings. The full text or extracts of such rulings shall be published in newspapers designated by the court, at the expense of the infringer. There is only one specific provision concerning the publication of rulings, and it relates to patents. Article 80.5 of the 1992 Law provides that "(...) the court may authorize the publication of the ruling or of an extract therefrom in one or more newspapers, at the expense of the infringer or infringers". As far as other IPRs are concerned, Article 1036 of the above-mentioned Code of Civil Procedure will be applied. Return of infringing goods Once infringing goods have been sold, they belong to the purchaser and the court cannot order the infringer to take them back. On the other hand, it can order him to write to his clients to inform them of the existence of a court ruling. Penalty payments Under the terms of Article 2059 of the Civil Code16, "at the request of one party, the judge may sentence the other party, if the main sentence has not been satisfied, to pay a sum of money known as a penalty payment, though without prejudice to any damages that may be adjudged. However, a penalty payment may not be imposed in the event of a previous sentence to pay a sum of money". With regard to patents, Article 80.5 of the 1992 Law expressly provides that "the suspension order may be accompanied by a pecuniary penalty". Communication of commercial data With regard to trademarks, Article 13bis.5 of the Uniform Benelux Law provides that "at the request of the proprietor of a mark, the court may order the person who has infringed his right to supply to the proprietor all information at his disposal with respect to the origin of the objects that have infringed the mark and to communicate to him all relevant data".]
[Answer 21: 1.Copyright and neighbouring rights Article 29 of the Law of 29 March 1972, as amended, clearly establishes that "any wilful or fraudulent violation of copyright shall constitute the offence of infringement". It goes on to stipulate that "any one who knowingly sells infringing articles or displays them for sale, stocks them for the purpose of sale, imports them or circulates them on the territory of Luxembourg for commercial purposes, shall be guilty of the same offence". Article 32 of the same Law defines as a similar offence "any wilful or fraudulent affixation on a literary or artistic work of the name of the author, or of any distinctive sign adopted by him to identify his work (...)". Article 35 further provides that "the provisions of Title I of the Criminal Code (...), entrusting the courts and tribunals with the evaluation of extenuating circumstances shall apply to the offences provided for in this Law". 2.Patents The 1992 Law on patents provides for no criminal procedures or penalties25. 3.Trademarks The criminal provisions on marks are contained in the Law of 28 March 1883 on trademarks (Article 14 et seq.).26 Article 3 of the Law of 7 December 1966 approving the Benelux Convention Concerning Trademarks, signed at Brussels on 19 March 1962, and introducing into domestic legislation the Uniform Benelux Law on Marks annexed to the Convention, provides that the provisions of the aforementioned Law of 28 March 1883, as well as all other domestic statutes or regulations on the subject, which are at variance with the Uniform Law and the implementing regulations enacted pursuant to Article 2 of the Convention, shall be repealed at the time of entry into force of the aforesaid Law and regulations. The criminal provisions of the Law of 28 March 1883 are not at variance with the Uniform Law and the implementing regulations thereunder and are consequently still in force.27 4. Industrial designs There are no specific criminal provisions on this subject.]