Registration of marksi Formalities and process for trademark registration
Greek trademark law retains the prerequisite that a mark must be capable of being represented graphically. However, this prerequisite will soon be abolished because of the forthcoming implementation of Directive (EU) 2015/2436, which has dispensed with the prerequisite of ‘graphical representation’ of the mark to be applied for.
Trademark applications are submitted to the Trademark Office and are adjudicated by a single examiner on both absolute grounds (e.g., lack of distinctiveness, or the mark being descriptive, commonplace, functional, deceptive), and relative grounds (i.e., earlier rights). It is a peculiarity of the Greek trademark system that it provides for an ex officio search for prior rights that is, however, limited to prior national and EUTM registrations and applications, and to prior international trademark registrations with WIPO that designate Greece. With respect to earlier rights, a trademark application or registration (whether national, EU or international) may enjoy international priority under the Paris Convention or the Madrid Protocol.
The state fees for filing a trademark application are €110 for the first class and a further €20 for each additional class. Renewal fees are €90 for the first class, plus €20 for each additional class. The renewal period is 10 years after the filing of the application. State fees are currently under revision and are likely to increase slightly.
The time frame for trademark registration can be as short as about five months after the filing of the application if the examiner raises no objections. This five-month period includes the opposition period, which runs for three months starting from publication of the application on the website of the Trademark Office. If objections are raised by the examiner, or if there is an opposition, the usual time frame for a decision by the Trademark Committee is about 12 months. If the decision of the Trademark Committee is appealed before the administrative courts, the judicial process is exorbitantly long and it can take between seven and 10 years to obtain a judgment from a first instance administrative court, and one more year to obtain a judgment from a second instance administrative court.
An opposition may be filed on account of either absolute grounds (e.g., the mark is non-distinctive, descriptive, in common use) or relative grounds (i.e., prior rights). The time frame to file an opposition is three months after publication of the trademark application on the website of the Trademark Office. The prior rights on which an opposition may be based can consist of prior trademark registrations or applications (national, EU or international designating Greece), or prior non-registered distinctive signs, including company names.
With respect to registered trademarks, priority is determined on the basis of the date of the filing of the application with the Trademark Office. With respect to non-registered rights, priority is determined on the basis of actual use in the course of trade. Use in the course of trade and the date when the use commenced are matters of fact to be established by evidence.
Registration occurs when the decision of the examiner, or the Trademark Committee in the case of opposition proceedings, becomes final; that is, it cannot be appealed before the second instance administrative court. An appeal with the Council of State does not prevent registration, but if the contested judgment is reversed, registration will fail retrospectively.ii Absolute grounds
On absolute grounds, Greek law follows Article 3 of Directive 2008/95/EC. Absolute grounds for rejecting a trademark application include:
- lack of distinctiveness;
- the mark being:
- functional (including aesthetic functionality);
- inherently deceptive;
- a protected appellation of origin;
- a protected geographical indication; or
- contrary to morality;
- the mark consisting of the name of a state or of a national emblem; or
- the mark being filed in bad faith.
Distinctiveness and descriptiveness are assessed in view of the goods or services applied for. Only directly descriptive marks are incapable of registration; directly descriptive marks are those that describe the goods or services applied for by their literal (vocabulary) meaning. Conversely, marks that are only indirectly descriptive (i.e., they are descriptive by referring to some descriptive implication) are capable of obtaining trademark registration. Common terms are registrable if they are used in an uncommon way (i.e., if the goods or services to which they are to be applied are totally unconnected to those terms). For example, the mark ‘Reflex’ for steam-generating apparatus in Class 11 was found to be distinctive and not commonplace in respect of the goods applied for. The mark ‘World Academy of Sports’, filed in various classes, was rejected by the Trademark Committee for lack of distinctiveness and for being deceptive, because under Greek legislation, the term ‘academy’ can be used only for certified educational institutions. However, the judgment was reversed by the first instance administrative court and the mark was registered.
Slogans are registrable if they have some level of originality. For example, the slogan ‘With us you can do everything’ for hand tools and household apparatus in Classes 8 and 21 was found to be distinctive and not commonplace.
The Trademark Office is very suspicious of marks consisting of geographical terms, because they are likely to be either descriptive or deceptive. However, geographical terms are registrable if it is not reasonable to assert that they indicate the actual place of production of the relevant goods (e.g., terms such as ‘Everest’ or ‘Mont Blanc’ are registrable).
Neologisms (i.e., new words that are a combination of existing words), are, in principle, not registrable, unless they create an impression that is significantly different from the words of which they are composed. For example, the mark ‘Walkman’ filed by Sony for audio devices in Class 9 was found to be distinctive but neither descriptive nor commonplace.
Acquired distinctiveness (i.e., a secondary meaning acquired through use in the course of trade) can overcome the difficulty of lack of distinctiveness, descriptiveness or the mark being commonplace.
Single colours and simple colour combinations (i.e., consisting of up to three stripes) are usually registrable only if acquired distinctiveness is established.
Bad faith in filing a trademark application is established particularly in cases where a distributor or commercial agent files a mark that is used with the consent of his or her principal, or where one party files a mark that is owned by another party and there is some pre-existing cooperation or at least communications between the two parties. Bad faith can also be established when an applicant files, in Greece, a mark that has a reputation abroad. Finally, bad faith can be established when a trademark is applied for without actual intent to use and with the sole purpose of restricting competition.iii Prior rights
On prior rights, Greek law follows Article 4 of Directive 2008/95/EC. It is a peculiarity of the Greek trademark system that the Trademark Office makes an ex officio search for prior rights and can reject a trademark application on this ground, even if the owners of the prior rights do not file an opposition. However, this ex officio search by the Trademark Office is limited to prior national or EUTM applications or registrations, and to prior international trademark registrations filed with WIPO under the Madrid Protocol that designate Greece. The Trademark Office does not make an ex officio search for other prior rights, such as company names, or other non-registered distinctive signs; these can prevent registration, but need to be invoked by their owners by way of an opposition. Other prior rights that can prevent registration include earlier industrial designs and copyright.
Prior rights prevent registration if they cause likelihood of confusion, likelihood of association or dilution (see Section II.iii).iv Inter partes proceedings
Inter partes proceedings may be oppositions, cancellations or revocations.Opposition
See Section III.i.Cancellation
On cancellation, Greek law follows Directive 2008/95/EC. An application for cancellation is filed with the Trademark Committee. The decision of the Trademark Committee can be appealed before the administrative courts (i.e., first instance, second instance and the Council of State); the time limit for appeal is 60 days after notification of the judgment (90 days for foreign appellants). Cancellation occurs when the judgment cancelling the registration becomes final; that is, it cannot be appealed before the second instance administrative courts. The judgment cancelling the registration does not have any retrospective effects. The decision of the Trademark Committee is usually issued within 12 months of the filing of the cancellation, but if it is appealed before the administrative courts, the judicial process can be as long as 12 years.
The legal ground for cancellation is that the trademark should have been rejected because of absolute or relative grounds that were overlooked by the examiner.
If a party has filed an opposition that was rejected, they cannot file a cancellation on the same grounds.
The owner of the contested registration may invoke the proof-of-use defence against the applicant who requests the cancellation on the grounds of earlier rights (see Section III.i).Revocation
On revocation, Greek law follows Directive 2008/95/EC. An application for revocation is filed with the Trademark Committee. The grounds justifying revocation are:
- non-use of the trademark during a five-year period from the date of its registration, or non-use during a period of five consecutive years at any time, unless there are proper grounds justifying non-use (see Section III.i); or
- the trademark has become either commonplace or deceptive.
The decisions of examiners can be appealed before the Trademark Committee. The decisions of the Trademark Committee can be appealed before the administrative courts. It is only final judgments (i.e., those that cannot be appealed further before the second instance administrative court) that are recorded with the registry. For more details, see Sections II.ii (cases relating to the registration process) and III.iv.