Seizure regarding counterfeiting

Holders of intellectual property rights can act against counterfeiting through, among other things, the specific procedure of seizure for counterfeiting. This allows them, on the one hand, to obtain proof of an infringement of their rights (the so-called descriptive seizure - art. 1369bis/1, § 1-3 Ger.W.) and on the other hand to obtain additional measures against this infringement (the so-called protective seizure - art. 1369bis/1, § 4-5).

The descriptive attachment on counterfeiting

The descriptive measures

A first form of seizure regarding counterfeiting, is the descriptive seizure. This is a measure for gathering and preserving evidence (Antwerp April 1, 2020, IRDI 2020, vol. 1, 71).

Pursuant to section 1369bis/1, § 1, a description may be permitted of all objects, elements, documents or processes of a nature to prove the alleged counterfeiting as well as its origin, destination and extent. However, to prevent abuse, the description must be limited to those elements that relate directly and exclusively to the infringement (Cass. June 28, 1991, JT 1992, 180).

Article 1369bis/1, § 2 in particular lists the possible measures that the court may grant for the execution of a description. These are not effective attachment measures but accompanying measures to the descriptive attachment (Rev. Kh. Liège Feb. 15, 2011, IRDI 2012, vol. 1, 87). However, the enumeration of possible measures is by no means exhaustive; for example, it may include intangible facts such as the public performance of a musical work (Parl. St. Chamber, Nos. 51-2943 and 2944/001, 57-58). Although these are very broad measures, they are by no means unlimited: only measures that serve to establish the alleged infringement and that can establish the origin, protection and extent of that infringement are covered (ParL. St. Chamber, Nos. 51-2943 and 2944/001, 57-58).

10. The general legal principle of continuity of public service, does not prevent a court expert from describing objects or documents held by a public person (Cass. Sept. 30, 1993, P&B 1994, 56, note A. Vareman).

The conditions

An first condition for granting descriptive measures is the apparent validity of the intellectual property right invoked.

The court has a marginal right of review in this regard and must examine whether there is an apparent right (Ghent Dec. 22, 2014, DAOR 2015, paras. 114, 109). He should consider whether the asserted rights have a sufficient degree of certainty for them to justify a drastic measure such as an attachment for counterfeiting (Brussels June 21, 2011, Yearbook of Market Practices 2011, 945, note P. Thoumsin; Brussels Feb. 23, 2011, ICIP 2011, vol. 1, 104). Thus, the president should not limit himself to a mere formal examination of the right invoked (C. Dekoninck, J. Figys and J. Bussé, The seizure of counterfeit goods - a state of affairs (second edition), Intersentia, 2020, 41).

That the intellectual property right invoked must be ostensibly valid does not imply that the rights invoked must be undisputed or uncontested (Antwerp Feb. 6, 2008, IRDI 2008, 173; Antwerp Dec. 10, 2003, IRDI 2004, 204; Antwerp Oct. 18, 1999, IRDI 2012, vol. 4, 292; Ghent June 9, 1983, Pass. 1983, II, 115). This is an apparent validity which, even when the existence or validity of an intellectual property right is disputed, allows an attachment on counterfeiting to be granted (Cass. Jan. 5, 2012, ICIP 2012, vol. 2, 209, note V. Cassiers; Cass. Sept. 3, 1999, IRDI 2000, 71; Antwerp Feb. 6, 2008, IRDI 2008, 173; Antwerp June 25, 1990, Ing.Cons. 1991, 249; Ghent June 9, 1983, Pass. 1984, I, 115; Rb. Brussels June 13, 2003, IRDI 2003, vol. 3-4, 275).

The president may, as part of his prima facie assessment with caution, as he has an obligation to watch over the interests of all concerned and must be mindful of the far-reaching consequences of a descriptive seizure on counterfeiting (Ghent Nov. 14, 2011, IRDI 2013, vol. 1, 129).

The second condition for obtaining descriptive measures is to make a plausible case that there is evidence of infringement or imminent infringement of intellectual property rights.

Thus, the petition must plausibly demonstrate that an infringement of an intellectual property right could be committed (Cass. Nov. 25, 2011, IRDI 2012, vol. 2, 217; RDTI 2012, vol. 47, 59, note A. Cruquenaire and J. Henrotte; Brussels March 31, 2011, IRDI 2012, vol. 2, 223). Ordinary presumptions do not suffice (Cass. Nov. 26, 2009, IRDI 2010, vol. 2, 135, note L. Weynants; Brussels May 24, 2016, IRDI 2016, vol. 3, 253; Rev. Kh. Antwerp June 21, 2011, C/11/00067). It must be concrete indications (Brussels May 24, 2016, IRDI 2016, vol. 3, 253, note P. Cappuyns; Brussels Dec. 17, 2015, IRDI 2016, vol. 3, 247; Brussels Feb. 8, 2011, IRDI 2012, vol. 2, 225, note O. Gilard). An assertion from an anonymous source does not suffice (Brussels Sept. 20, 2011, IRDI 2012, vol. 2, 220). Statements made by the party that will be the subject of the counterfeiting seizure, or by one of its employees, may be a sufficient indication of infringement to grant descriptive measures (Rev. Nl. Orb. Brussels Jan. 8, 2019, ICIP 2019, vol. 1, 171).

Effective proof of infringement does not have to be provided, however, since the very purpose of the request for descriptive measures may be to verify certain indications and to obtain proof of the alleged counterfeiting (Brussels June 21, 2011, Yearbook of Market Practices 2011, 945, note P. Thoumsin; Rb. Brussels June 16, 2004, IRDI 2004, vol. 2, 188; Rev. Nl. Kh. Brussels Sept. 11, 2018, DAOR 2019, vol. 130, 73). Thus, descriptive measures should in principle only be refused if it is certain that the measures cannot contain any evidence of the infringements (Brussels Feb. 17, 2009, IRDI 2009, 181; Rev. Kh. Brussels Dec. 30, 2014, IRDI 2015, vol. 3, 223), if there are reasonable challenges to the infringement (Rev. Nl. Kh. Brussels Sept. 11, 2018, DAOR 2019, vol. 130, 73) or if insufficient evidence of infringement had been offered (Brussels April 24, 2018, ICIP 2019, vol. 1, 147).

Whether there is an infringement is to be assessed under the legal provisions of the intellectual property right invoked (Brussels Feb. 5, 1998, Ing.Cons. 1998, 89; Brussels April 10, 1997, IRDI 1997, 191).

However, the descriptive attachment may not be used to seek, identify or individualize unknown evidence useful for the resolution of a dispute based on acts of unfair market practices (Brussels Feb. 5, 2016, Yearbook of Market Practices 2016, 788)..

An attachment for counterfeiting may not be diverted from its purpose (in particular, the collection and preservation of any evidence of infringement or the extent thereof) in order to give third parties the impression that an infringement of an intellectual property right has already been established on the part of the garnishee and thus discredit him. The garnishee may therefore not directly address the clients of the garnishee and give them the impression that a court decision on the merits has already been pronounced against the garnishee in order to persuade them to cease their cooperation with the garnishee (Brussels 18 March 2013, ICIP 2013, 225).

The fact that the reputation of the supplier of an allegedly infringing product may be damaged in the eyes of the customer from whom a seizure of counterfeit goods is made is inherent in this procedure. This in itself does not constitute proof of malicious intent (Rev. Nl. Orb. Brussels July 17, 2019, IRDI 2019, vol. 3-4, 306).

It is not for the President to judge or interfere with the appropriateness of an attachment for counterfeiting. Indeed, one may not a priori deny the holder of an intellectual property right the possibility of having an impairment of his rights established (Brussels June 21, 2011, Yearbook of Market Practices 2011, 945, note P. Thoumsin; Bergen March 27, 1997, Ing.Cons. 1997, 102).

Implementation of the description

The court expert's order basically states that the latter has access to all information and documents in the possession of the party targeted by the measure.

Case law shows that it is fairly standard to attach various obligations to descriptive measures in order to make this measure more efficient (F. De Visscher and P. Bruwier, La saisie-description et sa réforme, chronique de jurisprudence 1997-2009, coll. Les files du journal des tribunaux No. 79, Brussels, Larcier, 2011, 84-88).

Generally, these obligations relate only to the information and documents specifically designated and requested by the court expert. In addition, the obligation for cooperation of the garnishee is often provided for.

The court may attach penalty payments to the order to the garnishee and any third party in possession of useful elements to turn over information or documents demanded by the court expert (including, e.g., passwords and other ways to access electronic documents) (Brussels Feb. 5, 1998, Ing.Cons. 1998, 89).

The protective seizure regarding counterfeiting

The attachment measures

Although article 1369bis, § 4, second paragraph qualifies these as "attachment measures" it does not involve an actual attachment within the meaning of the Judicial Code. They are measures that may be granted in addition to the description if deemed necessary to protect the intellectual property rights of the applicant. The court will grant them only if it considers this request reasonable and taking into account the circumstances specific to the proceedings.

The court may prohibit the holders of the infringing goods from disposing of the materials, tools and related documents used in their production and/or distribution, as well as from moving them or making any modification to them that may affect their operation. Although the law does not explicitly target the infringing goods themselves, they may obviously also be covered by this prohibition.

The judge may also appoint a custodian and seal the items.

Finally, if the counterfeiting gives rise to income for the infringer, the judge may also authorize the precautionary seizure of this income to the extent that it appears to have its direct origin in the alleged counterfeiting (see also in this regard article 584, fourth paragraph, 5° Ger.W). Practice shows that this measure is rarely claimed, since it is often difficult to ascertain whether certain income effectively has its "direct origin" in the alleged counterfeiting.

Since the purpose of these measures is to prevent the dissemination of these goods, these measures remain in effect even after the filing of the report, and, unless the order provides otherwise, until the decision on the merits (Parl.St. Chamber, Nos. 51-2943 and 2944/001, p. 60; Brussels Dec. 18, 1998, IRDI 1999, 65).

The conditions

A second, more far-reaching form of counterfeit seizure is the granting of protective measures.

The conditions for granting protective measures are listed in Article 1369/1, § 5 of the Judicial Code:

(i) The apparent validity of the intellectual property right invoked

(ii) The breach cannot reasonably be disputed

(iii) Weighing the interests involved, including the public interest and based on the documents relied upon by the applicant

The first condition is the same as for the request for descriptive measures.

Thus, in principle, the validity of the intellectual property right invoked is assessed no more strictly than in the case of descriptive measures (Cass. Mar. 25, 2005, AM 2008, 106, note F. De Visscher and P. Bruwier), although this is subject to debate (F. De Visscher and P. Bruwier, La saisie-description et sa réforme, chronique de jurisprudence 1997-2009, coll. Les files du journal des tribunaux, No. 79, Brussels, Larcier, 2011, 30-33). In any event, the court sovereignly assesses the intellectual property rights invoked (Cass. Jan. 3, 2002, Pass. 2002, I, 14).

Under the second condition, a higher degree of certainty must be shown that an intellectual property right has been infringed than in a request for descriptive measures (Cass. April 26, 2012, ICIP 2012, vol. 2, 265; Rb. Gent June 29, 2004, AM 2005, 433).

Parliamentary preparatory works provide some clarification on this. For example, serious and concordant evidence must be demonstrated (Parl.St. Chamber, Nos. 51-2943 and 2944/001, 62). Thus, general or vague allegations of infringement without citing specific elements regarding the right or infringement invoked are insufficient (Cass. Nov. 26, 2009, IRDI 2010, vol. 2, 135, note L. Weynants). Thus, anonymous declarations cannot be accepted as an indication (Brussels April 29, 2015, JLMB 2016, vol. 28, 1310; Bergen April 26, 2010, JLMB 2010, vol. 33, 1577).

At the third condition the court must weigh interests; the attachment measures must be reasonably justified.

The court must consider whether, after weighing the interests involved, the facts, and where appropriate, the documents relied upon by the applicant are such that they reasonably justify the attachment (Antwerp Feb. 9, 2011, IRDI 2011, vol. 2, 162, note J. Lindemans; Ghent June 21, 2010, ICIP 2010, 266; Antwerp Sept. 29, 2003, IRDI 2003, vol. 3-4, 256).

The court thus has a great power of appreciation when deciding on a far-reaching measure such as the granting of protective measures (L. De Gryse, "La Cour de cassation: gardienne des droits intellectuels?" JT 2007, 677-679; Rb. Brussels Oct. 4, 2005, IRDI 2006, vol. 1, 58; Rb. Gent Aug. 30, 2000, RW 2001-02, 461). In this context, he may take into account all elements of the case, including the interests of third parties (Parl.St. Chamber, Nos. 51-2943 and 2944/001, 63; Cass. Jan. 3, 2002, RW 2002-03, vol. 27, 1056), including the public interest (Brussels March 17, 2014, IRDI 2014, vol. 1, 436; Rev. Kh. Antwerp Feb. 16, 2009, NJW 2010, vol. 214, 32, note A. Vanderhaeghen).

Elements that may be considered in this light include the nature of the infringement, the position on the market, distribution techniques, life cycle of products, impact on economic activity (share in product range), accounting situation, public health, scientific development, foreign proceedings pending, imposition and amount of the deposit (see below), etc. (see e.g. Kh. Antwerp Sept. 30, 2008, IRDI 2009, 122).

A requested seizure measure is reasonably justified when the harmful effects on the holder of the intellectual property right cannot be avoided by a measure less harmful to the alleged infringer. The public interest is not affected by the seizure measures, as consumers still have the option of purchasing similar but non-infringing products (Brussels Dec. 7, 2012, ICIP 2013, vol. 2, 464).

The protective seizure may not, however, be a means of eliminating a particular product suspected of counterfeiting de facto permanently removed from the market (Brussels April 10, 1997, IRDI 1997, 191; Rb. Brussels Oct. 3, 2000, AM 2001, vol. 2, 255, note E. Van Melkebeke).

Counterfeit attachment may not be used to coerce the garnishee to enter into a settlement agreement. Thus, the garnishee must take extreme care to ensure that when a settlement agreement is signed, the "coercive" elements that necessarily result from the attachment measure (access to property of the garnishee in the presence of third parties (police, witnesses...) have been lifted and/or that the garnishee is given the opportunity to consult third parties (pre-eminently his counsel) (Antwerp April 1, 2020, IRDI 2020, vol. 1, 71).

The protection of confidential data of the garnishee

The Belgian legislature has provided for the protection of confidential information of the garnishee in four different ways: the court may attach various conditions to descriptive measures (art. 1369bis/1, § 3, second paragraph); in principle, the applicant cannot be present at the attachment operations unless an express and individually motivated consent has been given, with conditions attached to this also in such a case (art. 1369bis/4); the court expert must ensure that the legitimate interests of the alleged infringer and of the holder of the objects described are safeguarded (art. 1369bis/6) and the applicant may not use the elements of the report other than in the context of proceedings (art. 1369bis/7, § 2).

Third-party opposition by the garnishee

Once the order is served, the garnishee may lodge a third-party opposition within one month of service. Thereafter, the order has the force of res judicata, which means, among other things, that the nullity of the order can no longer be declared in any other proceedings (Rb. Brussels December 12, 2003, IRDI 2004, vol. 3, 284).

A third-party objection to an attachment on counterfeiting is brought before the president who issued the order.

A third-party opposition will not necessarily result in the suspension of the execution of the order. The court expert will therefore continue to carry out his assignment (Rb. Antwerp Feb. 29, 2008, IRDI 2008, 184), unless a decision based on article 19, third paragraph Ger.W. would meanwhile suspend the filing of the report pending a decision to the contrary after third-party opposition (Brussels Dec. 17, 2015, IRDI 2016, vol. 3, 247; Rev. Kh. Brussels Dec. 2, 2014, IRDI 2015, vol. 3, 221; Ghent June 16, 2009, IRDI 2009, vol. 4, 380; see also F. De Visscher and P. Bruwier, La saisie-description et sa réforme, chronique de jurisprudence 1997-2009, coll. Les files du journal des tribunaux No. 79, Brussels, Larcier, 2011, 131-132).

When a garnishment order is set aside, all documents that have come into the hands of the court expert pursuant to the enforcement of the set aside order must be returned to the garnishee. If this annulment order is the subject of an appeal in cassation (which does not have a suspensive effect), and there is a fear that by returning documents the garnishee will make it impossible to prove the infringements committed by him, the interlocutory court may order measures to safeguard the rights of the victim of the infringement (Cass. Dec. 19, 2013, ICIP 2014, vol. 1, 45; Brussels Feb. 22, 2011, IRDI 2011, vol. 2, 122, note B. Vandermeulen).

What is the fate of the expert's report if the order authorizing attachment for counterfeiting is annulled? According to the Court of Appeal of Brussels, this means that an authorization should not have been granted which violated the debtor's fundamental rights (such as article 15 GW, article 8 ECHR and article 7 Charter of Fundamental Rights of the European Union). That committed illegality exceeds the seriousness of the garnishee's infringement of intellectual property rights. The appointed court expert's report should therefore be excluded from the debates on the merits of the proceedings (Brussels Sept. 11, 2018, IRDI 2018, vol. 2, 128, note T. Heremans; see also Brussels April 24, 2018, ICIP 2019, vol. 1, 147). In contrast, the Antwerp and Mons Court of Appeal ruled that the findings of the bailiff and the expert, made in the context of a descriptive seizure concerning counterfeiting, could in any event remain valid as factual presumptions. The garnishee's due process rights are not affected by the potentially unlawful search because they were able to present their arguments in court (Antwerp May 14, 2018, IRDI 2018, vol. 2, 122, note T. Heremans; Bergen March 12, 2018, AM 2018-19, vol. 1, 71). In particular, the courts applied the so-called Antigone doctrine of the Supreme Court (Cass. Oct. 14, 2003, P.03.0762.N) differently to counterfeit attachments. The legal doctrine argues that after a successful third-party objection, the expert report can no longer be relied upon since, in the negative case, it makes little sense to file further third-party objections (T. Heremans, "The Antigone Doctrine and Counterfeit Attachment, IRDI 2018, 142; C. Dekoninck, J. Figys and J. Bussé, The seizure of counterfeit goods - a state of affairs (second edition), Intersentia, 2020, 32).