Intellectual Property

Intellectual Property

Intellectual property is extremely valuable for many companies. By exploiting intellectual property rights, investments in innovation can be recouped. By enforcing intellectual property rights, competitors can be kept at bay. The structuring and restructuring of intellectual property portfolios can yield strategic benefits and tax benefits. Houthoff's IP Team advises national and international clients in all intellectual property areas, including copyright, trademarks, design rights, trade name rights, domain names, database rights and patents. We are also one of the few firms that specialise in plant breeders' rights. Our IP Team also advises clients on the protection of trade secrets. 

  • recommendation people shaking hands
    "Clients value the lawyers for their 'responsiveness, excellent advice and approach, containing practical and reliable solutions'."
    Chambers Europe, Intellectual Property: General - Mostly Trade Mark/Copyright (2018 Edition)
  • recommendation people shaking hands
    "According to sources, the lawyers display a 'quick grasp of the issues' and offer 'sensible, pragmatic advice'."
    Chambers Europe, Intellectual Property: General - Mostly Trade Mark/Copyright (2018 Edition)
  • recommendation people shaking hands
    Houthoff’s department has a strong line in Supreme Court litigation.
    Legal 500, Intellectual Property: trade marks, copyrights and design rights (2018 Edition)
  • recommendation people shaking hands
    Houthoff’s department provides ‘prompt, comprehensive and to-the-point’ advice.
    Legal 500, Intellectual Property: Patents (2018 Edition)
  • recommendation people shaking hands
    "Broad range of expertise, handling contentious and non-contentious trade mark, patent and copyright issues, with a particularly strong focus on the pharmaceutical, automotive and media industries."
    Chambers Global, Intellectual Property: General (2017 Edition)
  • recommendation people shaking hands
    "The firm can provide an in-house expert for every different topic and provides an international network of lawyers that can assist in the various stages when co-operating with international companies."
    Chambers Europe, Intellectual Property (2017 Edition)
  • recommendation people shaking hands
    Recommended
    Legal 500, Intellectual Property (2017 Edition)
  • recommendation people shaking hands
    "The firm is well established and capable of meeting the commercial needs and demands of premier businesses. I have been impressed by its quick turnaround time."
    Chambers Europe, Intellectual Property (2016 Edition)
  • recommendation people shaking hands
    Recommended
    Legal 500, Intellectual Property (2016 Edition)
Our IP specialists assist clients in complex IP cases and have extensive experience in litigating before the Dutch Supreme Court and the European Court of Justice. They represent pharmaceutical companies in patent disputes and are also sparring partners for tech start-ups. They give clients from Houthoff's market-leading automotive practice group advice on a wide range of IP matters. The IP Team is often involved in M&A and technology-related transactions, in which they work closely together with our experts in other areas.

Our IP Team is known for its involvement in groundbreaking IP-related cassation cases and is valued by our clients because of the practical solutions and well-considered advice the team provides.

The Life Sciences, Agrifood and TMT sectors benefit from lawyers with comprehensive sector knowledge. Our IP specialists are part of sector-specific teams, including Healthcare & Life Sciences, Agrifood and Technology, Media & Telecom
  • Houthoff represented Mr Perridon and current management of Trust, a consumer electronics manufacturer, on the sale to Egeria. Trust's current board of directors will maintain its active role within the company.

  • Houthoff advised Poiesz Supermarkten B.V., a chain of supermarkets in the Northern Netherlands, on the acquisition of Zorggroep Friesland B.V., sole shareholder of  Van Smaak B.V.. Van Smaak B.V. delivers meals to healthcare institutions and individual customers and has the whole relating process (including the purchase of the raw materials, processing and logistics) in house.

  • In 2016 KwikFit launched a campaign in which it alleged that the 'KwikFit Brand Service' (Kwikfit Merkbeurt) was always 30% cheaper than service carried out by authorised repairers. In doing so, it made use of the trademark rights (logos) of many car manufacturers.

    On behalf of 18 car manufacturers, Houthoff challenged the validity of the KwikFit campaign. Following discussions with the fast fitter, KwikFit gave up its claims and ceased the use of the logos.

  • Houthoff advised Media Markt – Saturn on the establishment of a joint venture with Talpa, Juke Nederland B.V. Juke has launched an online on-demand music streaming service offering unlimited access to songs, playlists and radio content.
  • Representing the French medical device company Biobank in patent litigation proceedings, relating to both validity and infringement of its patents relating to a process for preserving and regenerating human bone.

  • Representing an US based company specialised in development and manufacturing of airport equipment in trade secret infringement proceedings in The Netherlands. The proceedings are pending at the District Court of The Hague under a confidentiality regime.
  • Litigation concerning infringement of copyright on the tins of the famous mooncakes of Maxim’s of Hong Kong.
  • Advising on the application of three major new European legislation activities:
    - Directive 2004/48/EC (Enforcement of IP rights);
    - the (new) Regulation 608/2013 (anti counterfeit and piracy);
    - the legislative process for the review of the European trademark system (amending Regulation 207/2009 Community trademark); and,
    - the recast of the EU trademark directive
  • In case C-174/15 the District Court of The Hague referred preliminary questions to the Court of Justice on the interpretation of European copyright Directives. The questions concern the remuneration to which authors and publishers are entitled in case of 'e-lending' of ebooks by Dutch libraries. The case is important as the concerned Directives do not deal explicitely with e-lending and ebooks did not yet exist at the dates of these Directives.
  • Representing AIB in Supreme Court litigation against seeds producer Novisem on infringement of the plant variety rights of AIB's members (international seed companies). The case concerns (i) interpretation of the legal concept "offering for sale" in the Seeds and Planting Materials Act 2005 and (ii) the criteria under which a claim for disclosure of documents relating to an infringement by an opposing party may be allowed.
  • Advising on and litigating infringement of plant variety rights of international seed company Enza Zaden protecting its pepper crops. The case was heard in February 2015 at the District Court of The Hague; judgement is pending. In related proceedings, a successful opposition was filed against the grant of plant variety rights to the infringing variety. In a landmark decision, the Dutch Board of Plant Varieties, on the basis of the evidence provided, reversed its earlier decision to grant the rights, as it considered that the variety had not been developed by the alleged infringer.
  • On 16 July 2015 the Court of Justice ruled in case C-379/14 on the preliminary question of the Court of Appeal of The Hague whether a trademark proprietor can oppose the import of its trademark products and placing of these goods under a duty suspension regulation (the case relates to the Class/Colgate case on transit goods, which Houthoff partner Gerard van der Wal litigated successfully a few years ago). The case is important for international (parallel)trade.
  • Representing a large US Greek letter fraternity in a dispute concerning the unauthorised publication of their rituals on a website by a Dutch foundation.
  • Advised DNA Green Group, the fastest growing breeder of flowers and pot plants in the Netherlands, in its two major acquisitions of competitors Terra Nigra and Rijnplant and their extensive plant variety rights portfolios.
  • Advised Dümmen, part of DNA Green Group, the fastest growing breeder of flowers and pot plants in the Netherlands, on the acquisition of Florexpo, the global leader in the production of unrooted cuttings, based in Costa Rica.
  • Successfully representing Pictoright, the Dutch author’s rights organisation for visual creators, in copyright litigation against Allposters before both the Supreme Court and the European Court of Justice. Thijs obtained a favourable preliminary ruling from the ECJ, i.e. that the distribution rights of the maker of a copyright protected work are not exhausted when the copies thereof undergo a physical transformation after their first sale in the European Community. On 12 August 2014, leading IP blog 'The IPKat' dubbed this case "the CJEU copyright case to look most forward to". The ECJ has referred the case back to the Dutch Supreme Court.
  • Advising VAR, a subsidiary of Attero, in a patent infringement dispute relating to a concrete crushing installation.
  • Advising the Dutch Heart Foundation about IP aspects of multi million Euro funding agreements with consortia of academic medical research institutions for research and development projects.
  • Representing the Italian (veterinary) pharmaceutical company Innovet (part of Epitech Group) in patent litigation proceedings, relating to both validity and infringement of its patent relating to pharmaceutical compositions containing micronized compounds.
  • Representing almost all (major) medicines wholesalers in the Dutch market. The past year did not bring major litigation in trade packaging and (re)labeling pharmaceuticals, but we were as before very active in advising on parallel trade issues, repackaging and relabeling medicines. We have noticed a rise in questions and discussions on the SPC-mechanism (supplementary protection certificate for protected medicines) in relation to imports from the new (Eastern European) member states.

Publications

Thomas de Weerd

Key Contact

Amsterdam
Advocaat | Partner
+31 20 605 69 85
+31 6 5165 9208
Thijs van Aerde

Key Contact

Amsterdam
Advocaat | Counsel
+31 20 605 65 93
+31 6 4155 7812
Fleur Tuinzing-Westerhuis

Key Contact

Amsterdam
Advocaat | Counsel
+31 20 605 65 28
+31 6 4397 5040