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Which courts are empowered to hear trademark disputes?
Special divisions in the civil first and second-instance courts of Athens and Thessaloniki hear EU trademark cases. According to the prevailing opinion, these special divisions are not competent to hear preliminary proceedings. They hear only national trademark infringement cases in which they have jurisdiction. Where they have no jurisdiction, disputes regarding national marks are heard by:
- the civil one-member first-instance courts where the defendant is domiciled or resident; or
- the multi-member first-instance courts when, in addition to the trademark infringement, the action introduces other claims (eg, unfair competition).
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Both civil and criminal actions can be taken against trademark infringement. In addition, trademark owners may seek protection through administrative proceedings.
The following actions may be pursued in the civil courts:
- a temporary restraining order – these are available only in cases of extreme urgency. The judge may invite the respondents to appear at the hearing, although proceedings may also take place ex parte. Restraining orders may be requested only if an injunction petition has also been filed simultaneously;
- an injunction – preliminary measures involve the filing of a petition for an injunction. This petition also requires that the situation be urgent;
- a main infringement action – Law 4335/2015, applicable as of January 1 2016, introduced important amendments to civil procedures and changed the procedure before the first-instance civil courts from a partially oral procedure, which included the hearing of oral witness testimonies in court, to a written procedure. Following the filing of an infringement action, parties must file their pleadings, including evidentiary materials and all necessary documents, within 100 days (130 days for foreign residents) from the filing of the action, after which they have a further 15 days within which to submit rebuttal arguments. With the expiry of this term, the file is deemed to be closed and, within another 15 days, the judge in charge of the case is appointed. The hearing of the case takes place within the next 30 days, without examination of witnesses in court (unless the bench decides that this is absolutely necessary).
The intentional infringement of a trademark is a criminal offence. In this respect, the trademark owner must file a criminal complaint within three months from the day on which it became aware of the infringement. Criminal penalties include at least six months’ imprisonment and a minimum fine of €6,000. In the case of trademark counterfeiting (ie, the unlawful use of identical marks for identical or similar products) when particularly high profits arise or damages occur, on a commercial or professional scale, stricter penalties are imposed (ie, a minimum of two years’ imprisonment and a fine of between €6,000 to €30,000).
General provisions of the Penal Code (eg, with respect to forgery (Article 216) and fraud (Article 386) may also apply to trademark infringement.
Who can file a trademark infringement action?
The trademark owner must file an infringement action. The licensee may independently bring proceedings for trademark infringement only if its proprietor consents to such proceedings. However, unless otherwise agreed, the holder of an exclusive licence may independently bring such proceedings if the trademark proprietor, after formal notice, does not bring infringement proceedings within an appropriate period.
What is the statute of limitations for filing infringement actions?
The statutory limitation for damages claims is five years from the end of the year in which the infringement first took place.
Claims to cease infringement are subject to the general limitation period of 20 years from when the infringement occurred. The same applies for claims based on unjustified enrichment.
What is the usual timeframe for infringement actions?
The duration of proceedings will depend on the circumstances of each case. Under the newly revised Code of Civil Procedure, first-instance proceedings are expected to take 12 to 15 months.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
A rights holder is entitled to claim:
- the temporary cessation of an infringement;
- the provisional seizure of infringing products and their temporary withdrawal from the market;
- in the case of commercial-scale infringement:
- the provisional seizure of the infringer’s assets;
- the freezing of its bank accounts; and
- the disclosure of its bank, financial or commercial documents or due access to this information, which the court may order ex parte.
- In this respect, the trademark owner must prove that circumstances exist which may jeopardise actual payment of the indemnification. The filing of a related main infringement action is a prerequisite; and
- the publication of the order in the press or online.
Provisional measures can also be requested against intermediaries.
The related decision may also provide for penalties (eg, financial and personal incarceration) in the case of contempt of the decision and for each violation of its provisions.
A trademark owner may request measures to preserve evidence such as the provisional seizure of infringing products and, if appropriate, the material and tools relating to the infringement. Alternatively, the court may order the detailed inventory of the infringing products as well as the obtainment of samples, photos and related documents. The court may decide on the request without summoning the defendant.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
The trademark owner in the context of a main infringement action may request:
- the infringer to cease and desist using the conflicting sign permanently;
- the removal of the infringing sign from the products and, if this is not possible, the withdrawal of the products bearing the infringing sign;
- the destruction of the infringing products;
- moral and material damages; and
- the publication of the judgment in the press or online, at the infringer’s expense.
In the calculation of damages, the negative economic consequences suffered by the rights holder, including loss of profits and profits made by the infringer, must be considered.
Damages may also be calculated on the basis of hypothetical royalties.
In the case of absence of any liability on the part of the party making unauthorised use of a mark, the trademark owner may claim any undue profits or benefits earned.
Punitive damages are not allowed.
What customs enforcement measures are available to halt the import or export of infringing goods?
The EU Customs Enforcement Regulation (608/2013) is directly applicable in Greece and sets out the domestic customs intervention procedure. Owners of Greek trademark registrations may file a national application for action, whereas owners of EU marks may file an EU application for action in any member state requesting the customs authorities of that member state, as well as those of any other member states, to take action in their respective territories.
Under the Trademark Law (4072/2012), counterfeit goods that are in transit in Greece are considered to be infringing goods which may be seized by Customs and destroyed.
What defences are available to infringers?
In civil law cases, the infringer may invoke the following defences, among others:
- no likelihood of confusion between the marks;
- the sign is used in a descriptive way rather than as a trademark;
- the plaintiff’s use of the mark is misleading;
- the defendant has a prior right (eg, a trademark, non-registered mark or trade name);
- acquiescence by the proprietor of the earlier mark in the use of the infringing mark; and
- limitation of a trademark right.
In the context of administrative proceedings (eg, opposition or invalidity proceedings), if the grace period for non-use of the registered mark has expired, the defendant can request the trademark owner to prove that it has put its trademark to genuine use within the relevant period.
What is the appeal procedure for infringement decisions?
The first-instance decision may be appealed before the appeal court within 30 days from the notification of the decision or within 60 days if the party resides abroad.
If no notification of the decision took place, the term is two years from the publication of the decision.
Restraining orders and injunction decisions are not subject to appeal.
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