Saisie-contrefaçon proceedings allowed for trademark owners

The Belgian Constitutional Court has ruled that trademark owners should be allowed to request seizure orders for suspected counterfeit goods, even though the Belgian Judicial Code does not list mark owners among the parties eligible for such relief (Case 53/2004). The court held that not allowing mark owners to use these proceedings would violate the provisions of the Belgian Constitution on equality and non-discrimination.

Article 1481(1) of the Judicial Code provides that owners of patents, supplementary protection certificates, plant variety rights, copyrights and neighbouring rights - including the rights of producers of databases -, may request courts, in unilateral proceedings known as saisie-contrefaçon or saisie-description, to seize and describe suspected counterfeit goods. The goods seized are described in details prepared by an expert appointed by the court. The expert also lists all machinery and equipment specifically designed for manufacturing the counterfeits as well as all documents, plans, calculations and book entries related to the goods. The court can also impose an order on the alleged counterfeiter not to sell or distribute the relevant goods. The IP owner has one month to start proceedings on the merits after the expert has drawn up the report. Failure to do so makes the expert's report void. The risk of abuse of the proceedings is limited by the fact that courts generally request the plaintiff to pay a deposit.

Trademark owners, however, are not listed in the category of IP owners eligible to request saisie-contrefaçon proceedings. Most courts have therefore traditionally refused trademark owners' requests for such relief.

Last year, the seizure judge of the Leuven Court of First Instance, in a case between Euromedix and Cholestech Corporation, asked the Constitutional Court whether the difference in treatment between trademark owners and owners of other intellectual property is in conflict with the constitutional principles of equality and non-discrimination set out in Articles 10 and 11 of the Constitution.

The Constitutional Court has now answered that although there are objective differences between trademarks and other intellectual property, there is no reasonable justification for the difference in treatment. Thus, it ruled that saisie-contrefaçon proceedings should also be open to trademark owners. An interpretation to the contrary would violate the Constitution.

Michel Draps, Altius, Brussels