84
Legal Focus
ISSUE 72-16
counterclaim request the invalidity of the
plaintiff's IP rights.
Furthermore, we point out that one of the
traditional advantages of arbitration, i.e.
the confidentiality of the procedure which is
above all important in trade secrets disputes,
is likely to disappear in the near future. Indeed,
the recently agreed EU trade secrets directive
will introduce in all EU legal orders the idea of
the preservation of confidentiality of trade
secrets in the course of legal proceedings.
In addition, it cannot be excluded that such
a confidentiality of the procedure would be
introduced for other types of IP litigation as
well.
How complex can litigation become in these
types of cases?
In certain cases, IP litigation is highly complex
due to the subject matter, such as patent
litigation in the life science sector and
copyright cases in the high-tech industry.
Other cases which do not seem to be
complex from a technical perspective, may,
however still be complex on other levels such
as trademark cases where market surveys will
often be necessary to support infringement
or damages claims. In other words, in most
high profile cases the recourse to technical or
other non-legal experts will be necessary.
INTELLECTUAL
PROPERTY
LUXEMBOURG
Beginning our Special Feature Report on Intellectual
Property, Lawyer Monthly turns its attention to Luxembourg
IP infringement proceedings. This is an aspect
where lawyers have a crucial role to play and
also carry great responsibility in preventing
the client from launching and possibly losing
itself in a lost cause. There is a nice French
saying that a lawyer is the first judge ("l'avocat
est le premier juge") and this particularly holds
true in IP disputes.
Many see Luxembourg as a hub for IP
litigation; is this something you agree with?
Why?
Luxembourg is maybe not an absolute hub
for IP litigation such as other jurisdictions
like London, but Luxembourg as place of IP
litigation is definitely on the rise. Indeed, the
advantageous tax regime for IP revenues has
attracted many IP portfolios to Luxembourg
which are thus held by Luxembourg based
undertakings. This in itself attracts substantial
IP and related litigation work. Furthermore, in
IP litigation cases where these Luxembourg IP
companies are on the defendant side, there
is considerable chance that they will be sued
in Luxembourg on the basis of the principle in
private international law that defendants can
always be sued before the jurisdiction of their
establishment. This has, for example, resulted
in some important fashion cases before the
Luxembourg courts, cases which one would
expect to see only before the courts of Paris,
London or Milan.
Do they get very contentious?
Is litigation a popular form of dispute resolution
for Intellectual Property-related disputes?
Although
alternative
dispute
resolution
mechanisms, such as arbitration, are on the
rise, litigation before the ordinary courts is still
a popular form of dispute resolution for IPrelated disputes. In this regard, we point out
that in some jurisdictions it is even questionable
whether infringement proceedings can form
the object of arbitration. Furthermore, in some
jurisdictions where arbitration for infringement
proceedings is allowed, the validity of the
other party's IP rights still falls outside the
scope of arbitration.
Nonetheless, the fact that the invalidity of
and the issues that can arise with the IP sphere. To this
IP rights can only be claimed before the
end, we speak to Vincent Wellens, Partner at NautaDutilh
be in the interest of the plaintiff who avoids
Avocats Luxembourg S.à r.l.
dispute resolution mechanism by way of a
www.lawyer-monthly.com
Legal Focus
ISSUE 72-16
ordinary courts in several jurisdictions may also
the risk that the defendant may in alternative
Only a rather limited percentage of IP
disputes make it to a litigation procedure
before the ordinary courts. Hence, once
the parties concerned have reached that
phase, it is obvious that the case has become
very contentious and that there is little room
to reach a settlement at that stage of the
procedure.
How can you ensure that the chances of a
case becoming contentious are reduced as
much as possible?
IP rights are intimately linked to the identity
of the undertaking. As a result, that the
management of an undertaking rather quickly
feels - and often this is quite subjective - that
its IP rights are being infringed if a competitor
launches a similar idea or product on the
market. Therefore, it is absolutely necessary
to take a step back and to assess in an
objective manner the chances of success of
Last but not least, the ECJ and the General
Court of the EU, both of which are important
jurisdictions to decide on EU trademark and
design cases, are based in Luxembourg.
Furthermore, under the forthcoming unified
patent regime in the EU, Luxembourg will also
host a court of appeal.
What quirks does the system in Luxembourg
have that make it unique?
In comparison to other neighbouring
jurisdictions, IP proceedings are treated
quite swiftly before Luxembourg courts.
Furthermore, procedures can be launched in
both German and French.
A drawback of the Luxembourg system is
the limited possibility to recover lawyers' fees
from the losing party. This traditional position
may be considered to be contrary to the IP
Enforcement Directive 2004/48/EC, which
foresees that the winning party is, in principle,
entitled to recover its lawyers' fees from the
losing party. However, Luxembourg courts
start to understand this conflicting point and
have shown that they would be prepared
to order higher amounts for the recovery of
lawyers' fees and other cost from the losing
party, which will make Luxembourg even
more attractive for high-end IP litigation.
What do you find most rewarding about this
type of work? Why?
The fact that at the end of the day an IP
litigation ends with a court decision so that
as a lawyer you have a very concrete return
on your intervention whereas lawyers that
exclusively engage in advisory practice often
do not know if and how their advice has been
followed.
What frustrates you the most?
The IP procedures on the merits are well
dealt with in Luxembourg, whereas summary
proceedings can be more problematic
as the case handling judge may have less
experience in the field of IP. LM
Vincent Wellens
Partner
Avocat à la Cour (Luxembourg) - Avocat (Bruxelles)
Tel: +352 26 12 29 34 | Fax: +352 26 68 43 30
Email: [email protected]
www.lawyer-monthly.com
85