Background
Facts
Decision
Comment
According to the former Trademark Law (1998/1939), marks consisting exclusively of lines, numbers, words or signs were generally not registrable as trademarks. The new Trademark Law (2239/1994) has corrected this anachronism, acknowledging that designs, letters or numbers can have inherent distinctiveness. Furthermore, it acknowledges that originally non-distinctive marks can acquire distinctiveness through extensive use, independently from any other distinctive element, as long as such marks are perceived by consumers as an indication of origin.
The applicant is one of the largest telecommunication service providers worldwide. In order to distinguish its products and services, it uses four digits in a straight horizontal line as a secondary distinctive mark. The sign is protected as both a Community trademark and an international trademark, and the applicant applied for the extension of the latter mark to Greece. Interestingly, the validity of the same international trademark – but in a vertical arrangement – had already been extended to Greece following a decision of the Greek Trademarks Commission. Despite this, however, the commission dismissed the application for the extension of the validity of the same sign in a horizontal arrangement because of an alleged lack of distinctiveness.
The commission's finding was confirmed by Judgment 18650/2010 of the Administrative Court of First Instance. The court ruled that:
"this trade mark consists of a depiction of small squares in a straight line in the form of digits, without any colouring, and by its nature – and in relation to the products it is intended to distinguish – does not have any distinctive power, since it lacks any element descriptive of those."
The court found that the mark did not have the capacity to distinguish strongly the products to which it related, since the mark was not used on its own, but always in conjunction with other devices.
Apart from the erroneous conclusion that a mark is registrable only if it contains a description of the products to be distinguished, this judgment illustrates the general reluctance of the Greek courts to adhere to the new legal framework and to acknowledge the inherent distinctive power of abstract signs that do not comprise further elements.
In this specific case the court went even further, ignoring the fact that the applicant was one of the largest companies in the telecommunications sector, with a huge advertising budget, and had heavily advertised the mark in question on a Europe-wide scale for many years.
This judgment is erroneous in many respects. It is an example of a very rigid approach to the Trademark Law, since it disregards trends in modern brand creation and the dynamics of mark use in trade.
For further information on this topic please contact Stefanos Tsimikalis at Tsimikalis Kalonarou by telephone (+30 210 36 47 070), fax (+30 210 36 32 576) or email ([email protected]).