The system for trademark protection in Luxembourg includes:

• Registration

Luxembourg belongs to the following international treaties:

• Paris Convention
• Madrid Agreement
• Madrid Protocol
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
• Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks
• Trademark Law Treaty ("TLT")
• Singapore Treaty on the Law of Trademarks

The benefits of registering a trademark in Luxembourg include:

Other: It is the only form of protection available for trademarks.

Service marks

Yes

Defensive marks

No

Collective marks

Yes, the rules for the use (the submission of such rules is mandatory) of a collective mark must contain at least the following information: (i) the persons authorized to use the mark; (ii) the conditions for membership of the association, and (iii) the conditions of use of the mark, including sanctions.

Certification marks

Yes, the rules for the use (the submission of such rules is mandatory) of a certification mark must contain (i) the persons authorized to use the mark; (ii) the characteristics which the mark certifies; (iii) the manner in which the certification body verifies these characteristics and monitors the use of the mark; (iv) the conditions of use of the mark, including sanctions.

Well-known marks

Yes, the mark needs to be well-known in the industry branch and by the concerned public. As a consequence, the mark enjoys wider protection (i.e. beyond the rule of speciality, which limits the protection do the products and services for which the mark has been registered).

Series marks

No

Marks in a different language or characters other than Roman characters

Yes, the mark needs to be distinctive (i.e. it cannot be descriptive) and the fact that the mark is borrowed from a language that is not customary in the Benelux countries does not render it distinctive. The only possibility may be where the language in question is not commonly used in the industry and by the consumer public in question, such as to render the mark distinctive.

Non-traditional marks: Sound marks

Yes, the sound needs to allow the public to immediately identify the product or service. A sound needs to be produced as an mp3 in the application form.

Non-traditional marks: Smell marks

No

Non-traditional marks: Position marksYes, a position mark is characterized by the specific way in which it is placed or affixed to the product. A representation of the position mark needs to be produced in the application form.

Non-traditional marks: Color marks (i.e. registration of a single color or a combination of colors, e.g. Cadbury's purple color)

Yes, a color or combination of colors may be registered as a mark if the public distinguishes the product or service from others mainly because of its color.

Non-traditional marks: Shape or three-dimensional marks

Yes, in some cases, the shape of a product or packaging may constitute a mark.

Documents and information required to file a trademark application in Luxembourg include:

• Name and address of the applicant
• Representation of the trademark
• Goods and services and the class(es) for which the trademark is to be registered
• Other: If it is a figurative mark or a position mark, an illustration needs to be uploaded and the Pantone needs to be clarified. For sound marks, an mp3 file needs to be uploaded.

Yes, multi-class applications are permitted in Luxembourg.

Yes, there are substantive examinations of trademarks in Luxembourg on the following grounds:

• Other: Based on absolute grounds mentioned in the following section.

Absolute grounds for refusal of a trademark in Luxembourg include:

• Mark has direct reference to the character or quality of the goods or services
• Mark is not distinctive
• Mark consists of a geographical name
• Other: Are refused registration or are liable to be declared invalid if registered: (i) marks which consist exclusively of signs or indications which may serve, in trade, to designate the species, quality, quantity, destination, value, geographical origin or time of production of the productor the provision of the service, or other characteristics thereof; (ii) trade marks which consist exclusively of signs or indications which have become customary in the current language or inthe loyal and constant habits of the trade; (iii) signs made up exclusively: by the shape or other characteristic imposed by the nature of the goods themselves; by the shape or other characteristic of the goods which is necessary to obtain a technical result; by the shape or other characteristic which gives substantial value to the product; (iv) marks which are contrary to public policy or morality in one of the Benelux countries; (v) marks being of a nature to mislead the public, for example, as to the nature, quality or geographical origin of the goods; (vi) marks which, in the absence of authorisation by the competent authorities, are to be refused or invalidated under Article 6ter of the Paris Convention; (vii) marks excluded from registration under the law of the Union or under the national law of one of the countriesof the Benelux countries, or international agreements to which the European Union is a party or which have effect in a Benelux country,which provide for the protection of appellations of origin and geographical indications; (viii) marks excluded from registration under Union law or international agreements to whichthe European Union is a party and that provide for the protection of traditional terms for wines; (ix) marks excluded from registration pursuant to Union law or international agreements to whichthe European Union is a party which provide for the protection of traditional specialities guaranteed; and (x) marks which consist of a denomination of an earlier plant variety registered in accordance with the lawof the Union or the national law of one of the Benelux countries, or international agreements to which the European Union is a partyor having effect in a Benelux country, which provide for the protection of plant variety rights, or reproduce it in their essential elements, and which relate to plant varieties of the same species or of a closely related species.

Relative grounds for refusal of a trademark in Luxembourg include:

• There is a prior application for registration or registration for an identical or confusingly similar mark in relation to the same goods or services as the subject mark
• There is a prior application for registration or registration for an identical or confusingly similar mark in relation to similar goods or services (although in a different class) as the subject mark
• Well-known mark: There is a well-known mark that is identical or so nearly resembling the subject mark for the same goods or services as the subject mark
• Well-known mark: There is an earlier registered mark that is well-known for different goods or services and the use of the subject mark would indicate a connection between goods or services covered by the subject mark with the proprietor of the well-known mark.
• (i) Where the registration of the mark that is applied for by the agent or representative of the mark owner, in his own name, and without the authorization of the holder, unless that agent or representative justifies his action. (ii) When and insofar as, in the application of the legislation of the Union or the national law of one of the Benelux countries which provide for the protection of appellations of origin and geographical indications: (1) an application for a designation of origin or geographical indication had already been submitted in accordance with the legislation of the Union or the national law of one of the Benelux countries before the date of the application for registration of the mark or before the date of the priority claimed in support of the application, subject to subsequent registration; (2) such appellation of origin or geographical indication shall confer to the person authorized under the applicable law to exercise the rights deriving therefrom the right to prohibit the use of a later mark.

The time period from application to registration in Luxembourg is between 6-12 months.

Yes, late renewal of trademark registration is permissible in Luxembourg. The renewal fee may still be paid within a grace period of six months immediately following the date of expiry or renewal of the registration, subject to the simultaneous payment of a surcharge.

Yes, evidence of use needs to be submitted to the trademark office in order to maintain an application for registration or registration of a trademark in Luxembourg. The revocation of a mark can be requested by any person if the owner: (i) has not begun to use its mark even though it has been registered for at least 5 years or if it (ii) has abandoned the use of its mark for more than five years unless the owner proves right grounds for such non-use. The revocation of a mark may be total or partial, i.e. for all or part of the goods and services designated in the application. This also applies to European Union marks.

No, trademark licensees are not required to record themselves with the Registrar in Luxembourg. However, it is recommended that trademark licensees record themselves with the Registrar. A trademark license is only enforceable against third parties after registration of the application, in the form laid down by an implementing regulation and on payment of the fees due, and of an extract from the instrument establishing it or a declaration relating thereto signed by the interested parties.

Available enforcement methods in Luxembourg include:

• Civil enforcement
  • Infringement action
• Criminal enforcement
• Administrative enforcement
• Border or other administrative enforcement measures

None identified.