The IP right owners can file a criminal complaint in order to initiate criminal enforcement actions to be taken against traders in counterfeit products by the responsible governmental bodies, such as the public prosecutor and the police. The responsible governmental bodies are of course also empowered to initiate action themselves. 

After conducting a criminal investigation and/or receiving a criminal complaint from an IP right owner the police hand over the case to the public prosecutor. The public prosecutor has the freedom to decide whether or not to initiate criminal proceedings. In the event the public prosecutor decides not to take action the IP right owner can request the Court of Appeal to review the decision and instruct the public prosecutor to start criminal proceedings. Given the discretionary power of the public prosecutor the chances of success of such a request to the Court of Appeal are low.     

The central provision of the Dutch criminal enforcement regime for IP crime is article 337 of the Dutch Criminal Code (DCC, Wetboek van Strafrecht). This article relates to trademarks, trade names and designs. The Criminal Code distinguishes between offences and crimes. Trading in counterfeit products is a crime. Having a few items in stock for one’s own use is not punishable.

Article 337 DCC stipulates that (…)

“He who deliberately imports, carries out or exports, sells, offers for sale, delivers, distributes or stocks false, counterfeit or illegally manufactured trademarks, is punishable by imprisonment of maximum one year or a fifth-category fine, which is equivalent to EUR 90,000 at a maximum. The penalty does not preclude the right holder from seeking compensation of damages.”

The most important other IP rights on which criminal sanctions may be imposed are:

• Articles 31 et seq of the Dutch Copyright Act: intentional import, transit and export of objects that infringe someone else’s copyright. 
• Articles 22, 24 and 29 of Neighboring Rights Act: distributing of recordings and movies without consent of the producer/owner.
• Article 79 Patent Act: intentional infringement on patent rights in the course of trading. 
• Article 40 Seed and planting materials Act and Article 13(2) et seq. of EU Regulation 2100/94: trading in unauthorised/non-compliant planting materials.  
• Article 7 Trade name Act: using an infringing tradename. 

Deliberate infringement of copyrights is a crime and subject to six months imprisonment or alternatively a financial penalty of (in 2022) EUR 22,500. The burden of proof lies with the public prosecutor. For copyright infringement, by means of publication, or the mere disposal of infringing objects for reproduction or distribution, import, transit, export or storage (infringement in the course of trade) the sentence can be up to four years imprisonment, or a financial penalty of (in 2022) EUR 90,000 (Article 31a and 31b Copyright Act). Similar rules apply to infringement of trade marks, drawing and design rights, neighboring rights and patents.

The IP right owner can file a criminal complaint against the infringer and join the criminal procedure as a civil party in its capacity as a “victim party”. Criminal Courts are reluctant to award claims of damages and illegal profits in criminal proceedings. Dutch Criminal Courts have repeatedly decided that assessment of a claim for damages as a result of an intellectual property crime in a criminal procedure leads to a disproportionate burden for the Criminal Courts. Although the IP right owner has the right to be heard in the criminal proceedings, this will only be of help for the Court to determine the right sentence. For the claiming of illegal profits, damages and legal costs, the IP right owner will need to go to the Civil Court. 

The District Court of The Hague has exclusive jurisdiction in cases concerning:

• Patent law (Article 80 of the Patents Act 1995).
• Claims for annulment of decisions of the Netherlands Patent Office with regard to the granting of a supplementary protection certificate and with regard to the extension of its duration.
• Plant breeders' rights (Article 78 Seed and Planting Act 2005); also applies to Community plant variety rights claims that do not concern the validity of the plant variety right (referred to in Articles 94 to 100 inclusive of Council Regulation (EC) 2100/94 of 27 July 1994 on Community plant variety right, on the basis of Article 101 in conjunction with Article 78 Seed and Planting Act 2005).
• EU trade mark law (Article 123 of Regulation (EU) 2017/1001 of 14 June 2017 on the EU trade mark in conjunction with Article 3 of the relevant Implementing Act). Preliminary relief proceedings can also be initiated at other Dutch Courts. 
• Community design law (Article 80 paragraph 1 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs in conjunction with Article 3 of the Implementing Act EC Regulation on Community Designs). Preliminary relief proceedings can also be initiated at other Dutch Courts. 
• The compensation scheme for neighboring rights (Article 15c of the Neighboring Rights Act).
• The private copying scheme (Article 16g of the Copyright Act) and the topography law (Article 19 of the Topography Act).

Other matters relating to copyright, portrait rights, neighboring rights, database law, trade name law, unauthorized competition (including misleading and comparative advertising and slavish imitation) and Benelux trademark and design law can be brought before other Dutch Courts based upon venue and jurisdictions rules as laid down the Dutch Code of Civil Procedure (DCCP) and applicable IP laws.

The Dutch Code of Civil Procedure (DCCP) covers the rules relating to the proceedings at The District Courts, Court of Appeal and The Dutch High Court, including provisions concerning national and international jurisdiction. Some specific IP laws also contain provisions with regard to jurisdiction and venue. 

The DCCP relates to proceedings on the merits, preliminary relief proceedings, seizures and ex parte proceedings. Preliminary relief proceedings are often initiated in IP disputes to obtain an injunction to immediately cease an infringement.

All proceedings are started with a writ of summons. In case of proceedings on the merits the defendant will be granted a term to file a statement of defence and a potential counterclaim, such as an invalidity/revocation claim. 

The proceedings are concluded by a court hearing. In complex matters the Courts have the possibility to grant both parties the right to file extra written arguments. In principle the Court will render a judgement with six weeks after the hearing or the date on which the parties have filed their final statements. In practice the rendering of a judgement is often postponed. In general a judgement is handed down within twelve to eighteen months after serving the writ of summons. 

In preliminary relief proceedings the writ of summons is followed by a court hearing before the preliminary relief judge of the competent District Court. Within fourteen days after the pleadings the District Court will render a judgement.   

The DCCP also contains provisions with regard to the enforcement of judgments.   

In addition to the general rules for civil proceedings articles 1019a to 1019i of the DCCP, implementation of EU directive 2004/48 contains specific rules for the enforcement of IP rights such as the preservation of evidence, pre-trial seizure, detailed description and collection of samples, materials and tools used in relation to the infringement, ex parte injunctions and full compensation of legal costs.         

Before initiating proceedings it is advisable to make an in depth assessment of the validity of the IP rights on which the infringement claims are based, because in the majority of the cases in The Netherlands the validity of the IP rights (especially in patent, design and copyright cases) are challenged by the defendant.   

Furthermore, it is advisable to make assessment of the credibility of the defendant in light of the actual collection of damages and the reimbursement of legal costs. 

Remedies that are most sought after in Dutch IP cases are:

• Injunctions (including cross border and ex parte injunctions). 
• Pre-trial seizure of assets/bank accounts, infringing stock and production tools. Permission for seizures need to be obtained from the preliminary relief judge of the competent District Court.
• Pre-trial preservation of evidence by a bailiff (after obtaining permission from the preliminary relief judge). The collected evidence will be held by a custodian and the IP right owner will need to initiate separate proceedings for the disclosure of the relevant documents that were seized. 
• Accountability relating to the infringement (prices, customers, suppliers, quantity of the products, remaining stock, etc.).
• Destruction of the infringing products. 
• Damages and/or transfer of profits.
• Recall of channels of commerce.
• Compensation of all reasonable and fair legal fees (including the costs of private investigators and test purchases). 

With regards to possible damages, it should be noted that Dutch law does not provide for punitive damages. The starting point is that only the actual damage suffered is compensated. 

Under Dutch law, it is an established principle that the claimant may claim either damages or a transfer of the profit made by the opposing party with the infringing activities. If damages are claimed, the amount of the damage suffered must be proven to the extent necessary. 

If the damage cannot be accurately determined, the Court is entitled to estimate the damage and award a lump sum, taking into account elements such as the amount of royalties or fees which would have been due if the infringer had requested authorization to use the IP right at stake.

The rules on grey market goods are harmonized at EU level. Exhaustion rules of IP rights ensure free circulation of goods. 

Rules on exhaustion of IP Rights equally apply throughout the European Economic Area (EEA - the European Union, plus Iceland, Liechtenstein and Norway) and the territorial scope of the exhaustion cannot be broadened by the national laws of an EU Member State.

The rule means that IP right owners cannot oppose against the sale of goods which have been put on the market in the EEA with the consent of the IP right owner.

There are some limitations to the concept of exhaustion. For instance, a trademark owner can oppose against a reseller selling goods bearing his trademark if the trademark owner has legitimate reasons to oppose further commercialization of the goods.

There is EU case law in which the CJEU answered the question whether the exhaustion rule applies in relation to trademarked samples of goods (eg. small perfume battles and testers) which the trademark owner provides to authorized dealers. In these cases, the CJEU held that if the trademark owner makes the testers available for demonstration purposes and prohibits their sale, the goods cannot be considered as put on the market. (C-127/09 - Coty Prestige Lancaster Group v. Simex Trading AG, 10 June 2010.)

The Netherlands Authority for Consumers and Markets (ACM) ensures fair competition between businesses, and protects consumer interests. ACM is responsible for the enforcement of consumer protection laws. The ACM has an option to report illegal activities by entrepreneurs. 

The notification/reporting option is open both for consumers and companies.

Companies can use www.acm.nl/nl/contact/tips-en-meldingen/tip-ons.

Consumers can use www.consuwijzer.nl/doe-uw-melding-bij-acm-consuwijzer. 

Another option is the reporting to the Netherlands Food and Consumer Product Safety Authority (NVWA). The NVWA i.a. monitors compliance with legislation on food safety and consumer products, more particularly compliance with safety of toys, cosmetics, machines, electrical appliances, gas appliances, fairground attractions and amusement parks, play equipment, household chemicals, ladders and stairs, children's beds and playpens, clothing and textiles. These products all fall under the supervision of the NVWA.

The NVWA i.a. has a reporting tool on its website for notification of violations of laws, also for reporting counterfeited products, see www.nvwa.nl/onderwerpen/imitatieproducten. 

Given the limited resources of the Dutch bodies involved in the criminal enforcement of IP infringements the vast majority of IP enforcement is done by the IP right owners through civil proceedings. 

In high profile cases, such as cases relating to consumer health and safety, the governmental bodies are more willing to act. One of the advantages for the IP right owner of criminal proceedings by the public prosecutor is the fact that the costs for the proceedings are born by the state. Furthermore, the state has far more legal instruments available to obtain evidence with regard to infringing activities than the IP right owner in civil proceedings. 

The Netherlands is perceived as being a cost-effective jurisdiction for enforcing IP rights. The fact that the losing party can be ordered to compensate all reasonable and fair legal costs and other expenses of the prevailing party, gives the IP right owner the opportunity to enforce its IP rights on a cost neutral basis. 

The border enforcement measures in the Netherlands are twofold: the customs authorities in the Netherlands may take action on a suspected infringement of intellectual property rights on the basis of a request for customs actions from the IP right owner beforehand or ex officio. 

The IP right owner may apply to the customs authorities to take action at the borders on its behalf by submitting an application for action. The main purpose of such application for action is to detain goods found to be suspected of infringing its intellectual property rights.

In the event the IP right owner has submitted an application which has subsequently been granted, the IP right owner will be sent a notification by the customs authorities and will be given the opportunity to establish whether the goods at issue infringe its rights and whether he wishes to take further action.

If the suspected goods are not covered by an application for action, the customs authorities will, on the basis of an ex officio customs action, try to identify and subsequently notify the IP right owner so that it can submit an application for customs action. Perishable goods are excluded from such ex officio procedures: the release of these goods shall not be suspended if no application for action has been submitted in advance.

In principle, the customs authorities do not deal with parallel import. 

As a rule, the costs for any activities performed by the customs authorities shall be charged to the interested party. This means that the IP right owner is liable for all costs resulting from the detention or suspension of the release of the goods at issue, the subsequent destruction of the goods and all related actions by the customs authorities. 

The IP right owner may, however, claim full compensation and reimbursement of said costs from the holder of the goods under Article 1019h of the Dutch Civil Code of Procedure. 

The Dutch Customs are very aware of the vast importance of enforcing IP Rights and – within the limits of their resources - work together closely with IP right owners to effectively prevent the import of counterfeit products.  

The customs authorities perform a helpdesk function for intellectual property information on suspected infringements. As such, law enforcement will regularly contact said helpdesk about the suspected products that may appear during their criminal investigations and which may, in fact, infringe intellectual property rights of any IP right owner.

The customs authorities will assess whether the case at hand meets any of the criteria as set out by the Public Prosecutor Office for criminal enforcement (e.g. if the products might pose a threat to public health or safety or society, large-scale counterfeiting disrupting the market, multiple recidivism, etc.). If so, the customs authorities will inform the Dutch Fiscal Fraud Police (FIOD) (Fiscale Inlichtingen- en Opsporingsdienst) about the suspected infringing goods accordingly. The FIOD will then assess whether this case will actually be dealt with under criminal law and informs the customs authorities within 4 hours. 

If the FIOD decides to initiate criminal investigation, the FIOD will seize the goods at issue or will request the customs authorities to do so. The goods are then handed over to the FIOD. 

The FIOD reports back to the customs authorities. For the purpose of profiling, it is important that the relevant case information resulting from the criminal investigation by the FIOD shall be disclosed to the customs authorities, in order to share this information (via risk databases) with Intelligence. 

The customs authorities will report to the FIOD on a monthly basis which cases have been forwarded to the FIOD. 

The customs authorities will provide information to the IP right owner on the actual or estimated quantity and the actual or presumed nature of the goods, including available images thereof, ‘as appropriate’. Further information such as names and address of the consignee, consignor and the declarant or the holder of the goods are only provided on request and after one has filed an application for action and the application for action is granted. The customs authorities may furthermore disclose the location of the infringing goods. 

The information received may only be used for the purposes as provided in the Regulation 608/2013. 

It is primarily the responsibility of the IP right owner to act against the importer, by means of a civil action. As such, the IP right owner may initiate civil proceedings in Court and may seize the goods by means of prejudgment attachment to prevent the goods from being released, for safekeeping of the goods pending the subsequent court proceedings.

The IP right owner may also directly initiate civil proceedings and may claim the prohibition of the infringing activities (e.g. the importing of the counterfeit products), compensation for any damages or prejudice suffered, in appropriate cases the transfer of ownership of the materials and implements principally used in the manufacture of those goods, the destruction of the goods, and that the importer shall provide all information available concerning the origin and distribution networks of the counterfeit products and all the data relating thereto. The IP right owner may furthermore claim that the importer takes the appropriate measures to disseminate information concerning the Court order rendered.

In such civil proceedings, the IP right owner may also claim for the provision of accounts of the importer in relation to possible previous shipments of such goods. In that respect it may also claim the transfer of profits made by such prior infringements, a recall from the channels of commerce, and the definitive removal from the channels or commerce.

The IP right owner may also decide to file a report to law enforcement (i.e. for distributing counterfeit products under Article 337 of the Dutch Criminal Code).

The customs authorities are open to receiving product information and on-premises training of their personnel by the IP right owners or their representatives. 

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In accordance with the case law of the Court of Justice of the European Union on copyright law, hyperlinks and the communication to the public (judgments C-392/19 - VG Bild-Kunst, 9 March 2021; C 160/15 - GS Media BV, 8 September 2016; and C-466/12 - Svensson and Others, 13 February 2014), circumvention of technological protection measures is considered communication to the public.

According to Article 29a of the Dutch Copyright Act a person who circumvents any effective technological measures knowingly, or with reasonable grounds to know he is doing so, acts unlawfully. Those who provide services or manufacture, import, distribute, sell, rent out, advertise devices, products or components or are in the possession of these for commercial purposes act unlawfully if such:

• are offered, advertised or marketed for the purpose of circumventing the protective operation of effective technological measures; or 
• have only a limited commercial significant purpose or use other than to circumvent the circumvention of the protective operation of effective technological measures; or
• are particularly designed, manufactured or adapted for the purpose of enabling or facilitating the circumvention of the protective operation of effective technological measures.

The Dutch foundation BREIN takes action in civil law and uses legal remedies provided by copyright law: infringers can be summoned to cease the infringement, infringing goods can be seized, damages can be demanded and payment of the legal costs can be imposed.

As long as internet providers and online platforms only have a passive role with regards to the content, they cannot reasonably be held liable for all illegal online activities of their customers. This changes as soon as they become actively involved in the content or become aware of the infringement. If they are made aware of the unlawfulness and do not remove the content, they can, in principle, be held liable (Article 6:196 c BW). 

There is no specific legislation against the online sale of counterfeit goods. 

The approach to an investigation depends on the facts and circumstances. If a seller has both an online and an offline sales channel, both will most likely be subject to investigation. Often private investigators use data from both sales channels to establish the seller's identity. If the extent of the infringement proves to be significant, seizure of the goods or reporting to law enforcement may be considered. Law enforcement shows interest, but has to prioritise due to workload. 

Domain name disputes can be submitted to WIPO and the Courts. The Dutch organisation SIDN, which manages the .nl domain, offers to mediate in WIPO cases and implements the WIPO decisions and court rulings. 

Recent data from SIDN shows an increase in the number of .nl registrations in 2021. Due to the COVID19 pandemic many offline entrepreneurs made a permanent switch to a (partly) online business. 

We are seeing an increase in the supply of counterfeit goods via Facebook marketplace and Instagram. With social media platforms in general we notice that they are reluctant to accept any responsibility for user content. 

The Netherlands does not have a national intellectual property law enforcement coordination body. The enforcement is fragmented, partly in the hands of Customs and partly with law enforcement (Fiscal Fraud Police (FIOD), falling under the Dutch Tax Authorities (Belastingdienst) and on an incidental basis the National Police). There is intellectual property law enforcement coordination being performed by Europol (see www.europol.eu). Europol’s mandate includes the support of law enforcement authorities throughout the EU on crime fighting activities in all its mandated areas including IP crime. Although Europol does not have executive powers, and its officials are not authorized to arrest suspects or act without prior approval from competent authorities in the Member States, it takes a leading role in many projects taking the protection of Intellectual Property rights to a higher level. The headquarters of Europol are in the Netherlands (The Hague). EUIPO and Europol work together in the field of intellectual property right protection. A special team of dedicated staff is employed at Europol’s office named the Intellectual Property Crime Coordinated Coalition (IPC3). IPC3 was set up in 2017 to increase information gathering and to monitor trends in the field of online intellectual property crime and related areas, and has produced significant results. 

Given the international dimension of most intellectual property crime on the one hand, and the funding from EUIPO (European Union) on the other hand, a stronger and bigger role for Europol to perform its activities is recommended. Dutch Police, as it stands does not prioritize the protection of society against IP crime, and gives more priority to higher impact crime. Although IP crime often goes hand in hand with other crimes like money laundering, human trafficking, drug-related crime and the possession of illegal arms, the political choice has not yet been made to invest more on IP protection by means of criminal enforcements. The civil enforcement (initiated by the IP right owners) must precede the criminal prosecution. Although this is not a rule of law, it is the reality for the right owners to arrange their own affairs first, before relying on law enforcement.

1. Is litigation the best solution for anti-counterfeiting / brand protection? 

Every counterfeiter should first receive a demand letter and be given the chance to settle out of Court. In the event a settlement cannot be reached, litigation is recommended. This will not only stop the infringer at stake but the judgment can also be used in order to stop other infringers. Going to Court sends out a clear message to traders in counterfeit products.   

2. How do we find the people responsible for the counterfeit operations?

Good preparation is paramount. Although it can become complicated, at the end of the day, counterfeiters are business people who want to sell their products, and get rid of their infringing stock. Collection of evidence by doing test purchases is highly recommended for three reasons: 1) to collect the infringing product and diagnose the infringement; 2) to be able to identify the seller; and 3) to be able to crosscheck the information when disclosed by the infringer on correctness and completeness.

3. Is the mere removal of infringing online content (listings of counterfeit products by (semi-automatic) software tools) sufficient to keep the Dutch online market clean? 

It is an important part of the solution, but not the solution. In practice the best solution is a combination of online removal and enforcement by an attorney. The removal tool can remove the biggest part, but often repeat offenders appear, under different ID or usernames, and continue their illegal activities. Here the cooperation and coordination is distinctive.  Digital collection of evidence is very helpful to stop a counterfeit trader in our jurisdiction. The role of attorneys is that of ‘boots on the ground’, working together with allies of online removal tools.