What is the primary legislation governing trademarks in your jurisdiction?
The Trademark Law (4072/2012), as amended by Law 4155/2013, governs trademarks in Greece.
Which international trademark agreements has your jurisdiction signed?
The most notable international agreements that Greece has ratified are:
- the Paris Convention for the Protection of Industrial Property (Stockholm, 1967 version);
- the Agreement on Trade-Related Aspects of Intellectual Property Rights;
- the Madrid Protocol on the International Registration of Marks;
- the Nice Agreement on the Classification of Goods and Services; and
- the World Intellectual Property Organisation Convention.
Greece has not signed the Madrid Agreement, the Singapore Treaty on the Law of Trademarks, the Vienna Agreement on the Classification of the Figurative Elements of Marks or the Vienna Trademark Registration Treaty.
Which government bodies regulate trademark law?
The Ministry of Economy and Development’s General Secretariat of Commerce and Consumer Protection is the central authority for trademark protection.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Trademark ownership is determined on a first-to-file basis.
What legal protections are available to unregistered trademarks?
Unregistered marks are protected under Articles 13 to 15 of the Law on Unfair Competition (146/1914) and are recognised as relative grounds for refusal under Article 124(3)(a) of the Trademark Law (4072/2012). Non-registered marks are territorial rights and enjoy protection only in the geographical area where they have been used.
How are rights in unregistered marks established?
Rights in unregistered marks are established through use in the course of trade. Adequate use is required; the guiding principle is that use must be substantial, systematic and continuous, preferably for a number of years. The courts rule in this respect on a case-by-case basis.
Are any special rights and protections afforded to owners of well-known and famous marks?
Under Greek trademark law and jurisprudence, famous marks enjoy a broader scope of protection – extending to non-competing goods and services – while the protection conferred to them is not conditional on a likelihood of confusion. In this respect, it is recognised that famous marks must also be protected where use of the later sign, without due cause, takes unfair advantage of or is detrimental to the earlier famous mark’s distinctive character or reputation.
The act of infringement of a famous trademark is now explicitly considered to be a criminal offence.
To what extent are foreign trademark registrations recognised in your jurisdiction?
A foreign registration used in Greece may enjoy protection as an unregistered sign. A ‘notoriously known’ mark within the meaning of Article 6bis may enjoy protection even if it has not been used in Greece.
A foreign registration may be considered to be a relative ground for refusal, as a sign will not be accepted for registration if it is likely to cause confusion with a trademark which was registered and being used abroad when the latter application was filed if the latter application was made in bad faith.
What legal rights and protections are accorded to registered trademarks?
The registration of a trademark confers on its proprietor the exclusive right to use the mark, including the right to:
- affix it to products which it is intended to distinguish, including packaging, as well as:
- writing paper;
- price lists;
- advertisements; and
- other printed material;
- use it in electronic or audiovisual media; and
- use it to characterise services provided.
A trademark owner is entitled to prevent all third parties from using in transactions, without its consent, any sign which is:
- identical to the mark in question and used in relation to identical goods or services;
- identical or similar to the mark in question and used in relation to identical or similar goods or services, provided that a likelihood of confusion exists, including a likelihood of association; or
- identical or similar to the mark in question, where the mark has acquired a reputation and use of the sign would take unfair advantage of the famous mark’s reputation without due cause or would cause detriment to the famous mark’s distinctive character or reputation, irrespective of whether the sign will cover goods or services which are similar to those covered by the famous mark.
A trademark owner is also entitled to prevent:
- the transit of counterfeit goods through Greece or the import of counterfeit goods into Greece with the intention to re-export them;
- the affixation of a trademark on authentic goods that the owner intended to market unbranded; and
- the removal of a trademark from genuine goods and their sale unbranded or bearing another mark.
In the case of trademark infringement, the trademark owner may seek protection before the civil and, if applicable, the criminal courts. The trademark owner may also seek protection of its marks through administrative proceedings, including the filing of oppositions or requests for revocation or the declaration of invalidity.
Who may register trademarks?
Any natural person or legal entity may file an application for the registration of a trademark, while clubs and associations may apply for the registration of collective marks.
What marks are registrable (including any non-traditional marks)?
Under Article 121 of the Trademark Law, a sign is registrable if it can:
- be represented graphically; and
- distinguish the goods or services of one undertaking from those of another.
In particular, a trademark may comprise, among other things:
- names of natural persons or legal entities;
- designs and logos;
- sounds (including musical phrases); and
- the shape of goods or their packaging.
Combinations of more than one colour can possess distinctiveness and may be used as trademarks in their own right. Even a single colour may serve as a mark, provided that it possesses sufficient distinctiveness.
It remains to be seen whether and to what extent the EU Trademarks Directive (2015/2436/EU) will influence or relax the graphic representation requirement. To date, no marks have been filed in Greece for sounds, scents or tastes.
Can a mark acquire distinctiveness through use?
A sign which is descriptive or devoid of inherent distinctiveness may acquire distinctiveness through use in transactions, except in the case of signs that consist exclusively of a shape which results from the nature of the goods, which is necessary to obtain a technical result or gives substantial value to the goods. Distinctive character will be assessed at the time of the trademark application’s filing.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
The Trademark Office examines ex officio absolute and relative grounds for refusal.
Absolute grounds for refusal
Under, Article 123 of the Trademark Law (4072/2012), the following cannot be protected as trademarks:
- signs that are devoid of distinctive character;
- signs that are descriptive, commonly used, customary or functional;
- signs which may deceive the public as to, among other things, the nature, quality or geographical origin of the goods or services intended to be covered;
- signs that are against public policy or morality;
- signs that consist of the flags, emblems, symbols, escutcheons, signs or hallmarks of Greece or any other state covered by Article 6ter of the Paris Convention for the Protection of Industrial Property; and
- signs of great symbolic value and special interest, particularly religious symbols, representations and words.
Signs comprising geographical indications for wine and alcoholic beverages and geographical indications or appellations of origin for agricultural products are expressly exempt from trademark protection.
Finally, a trademark cannot be registered if it has been filed in bad faith.
Relative grounds for refusal
A trademark application can be refused on relative grounds if it:
- is identical to an earlier trademark and both marks cover identical goods or services;
- is identical or similar to an earlier trademark, the goods or services respectively covered are identical or similar and there exists a likelihood of confusion (including the likelihood of association) among consumers;
- is identical or similar to an earlier trademark which has acquired a reputation, even if the goods or services respectively covered are dissimilar, when the use of the later mark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark. In this respect, ‘earlier trademarks’ include:
- earlier registered national trademarks, EU trademarks and international registrations designating Greece;
- earlier applications, subject to registration; and
- well-known marks, within the meaning of Article 6bis of the Paris Convention;
- conflicts with an unregistered trademark or with any other distinctive sign or feature used in the course of trade which gives the proprietor the right to prohibit the use of any later trademark;
- conflicts with an earlier right of personality or a prior right of intellectual or industrial property other that those regulated by Trademark Law; or
- is likely to cause confusion with a trademark which has been registered and used abroad at the time of the filing of the application, provided that it was made in bad faith by the applicant.
Are collective and certification marks registrable? If so, under what conditions?
Greek trademark law provides for the registration of collective marks, but not certification marks, as the latter are considered to be unable to perform an origin function.
A collective mark must be capable of distinguishing the goods or services of the members of the mark’s owner from those of other entities, by reference to the geographical origin, type, quality or properties of such goods or services.
Only associations with a legal capacity, as well as legal entities governed by public law, have the right to apply for collective marks.
Collective marks can consist of a geographical indication. These collective marks do not give the proprietors the right to prevent third parties from using such signs or indications, especially third parties which are allowed to use geographical names, provided that these third parties use them in accordance with the honest practices of the trade.
The filing of a collective mark application must be accompanied by a regulation of use, which contains:
- the title;
- the location;
- the purpose;
- the name of the legal representatives;
- a nominal list of members entitled to use the mark; and
- the terms and conditions of the members rights and obligations concerning this use.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Agents need a signed power of attorney. No notarisation or legalisation is required.
What information and documentation must be submitted in a trademark registration application?
The information that must be submitted when filing an application is:
- the applicant’s full name and address;
- the full name, address, telephone and fax numbers and email address of the authorised attorney (if appointed);
- the full name and address, telephone and fax numbers and email address of an addressee for the documents served;
- a representation of the mark and an indication of its type (eg, word mark, device mark, three-dimensional mark or packaging, collective mark or sound mark) and whether it is in colour or black and white;
- a complete list of goods and services, according to class; and
- if priority is claimed, the number, date and country of the mark on which priority is based.
In case of marks not written in Latin or Greek characters, the application must include the mark’s transliteration into Latin or Greek characters. In addition to submitting a hard copy trademark application form, applicants must submit the completed form and an imprint of the mark electronically (on a CD or USB).
If the applicant is a domestic company, the necessary legal documents regarding the company and the authorisation of the person signing the power of attorney for the company are required. If the applicant is a domestic general or limited partnership company must submit a copy of its articles of incorporation. A public limited or limited liability company, it must submit copies from the general business registry. These documents must evidence the existing particulars of the company and persons vested with powers of representation.
Where the applicant is not a Greek resident, the power of attorney should also include a statement of its subordination to the jurisdiction of the Athens courts.
The application form must be accompanied by a document proving the payment of the application fee.
Following the entry into force of the EU General Data Protection Regulation, the Trademark Office notifies applicants/owners who are natural persons that their personal data and relevant recordals in the Hellenic Trademarks Register are considered to be in the public interest; as such, they are accessible by any third party and are stored indefinitely. Personal data that is not included in the Trademarks Register, but which is nonetheless provided by trademark applicants/owners or other parties during procedures with the Trademarks Office and the Administrative Trademarks Committee, is also stored indefinitely, unless the data subject requests its deletion within two years from the expiry of the trademark or on the completion of the relevant procedure. Therefore, along with their trademark application, applicants must file a related declaration that they have duly taken note of the above.
What rules govern the representation of the mark in the application?
Trademarks must be represented graphically and the representation must be clear and precise.
Are multi-class applications allowed?
Yes, multi-class applications are allowed.
Is electronic filing available?
Yes, electronic filing is possible through the Trademark Office’s special service. An electronic signature is required.
What are the application fees?
The official costs for filing a trademark application are:
- the e-deposit fee of €110 for the first class and €20 for each additional class up to 10 classes; and
- stamp duties of €6.
How are priority rights claimed?
Priority can be claimed only within six months from the date of filing an application in one of the signatory countries of the Paris Convention for the Protection of Industrial Property.
When claiming priority, the date, country and number of the trademark application on which priority is based must be specified. It must also be indicated whether priority is claimed for all or some of the goods or services.
The priority document must be:
- submitted within three months from filing the application in Greece; and
- accompanied with a translation.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Trademark searches are not required before filing. However, they are recommended to analyse the risk of possible objections. Searches are possible through the EU Intellectual Property Office, the World Intellectual Property Organisation Madrid Monitor and the TMVIEW databases. It is also important to consult the Trademark Office’s records.
What factors does the authority consider in its examination of the application?
The Trademark Office first examines formal requirements and, in case of irregularities or deficiencies, will invite the applicant to correct or supplement the application within one month.
Subsequently, an examiner checks for both absolute and relative grounds of refusal.
Does the authority check for relative grounds for refusal (eg, through searches)?
The examiner checks via searches for relative grounds for refusal.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
If the examiner raises objections it will invite the applicant to withdraw the application, restrict its scope of protection or file observations within one month from the invitation.
Can rejected applications be appealed? If so, what procedures apply?
An examiner’s decision to reject a trademark application in whole or in part is subject to recourse before the Administrative Trademark Committee within 60 days (90 days in the case of foreign residents) from the date of notification. The committee’s decision is subject to further recourse before the Administrative Court of First Instance.
When does a trademark registration formally come into effect?
Once a trademark has been accepted by an unassailable decision of the examiner or the Administrative Trademark Committee or in a final administrative court judgment, the word “registered” is noted in the trademark register and the trademark formally comes into effect.
What is the term of protection and how can a registration be renewed?
The term of protection is 10 years, which commences the day after an application is filed. The number of renewals is unlimited. For the renewal of a trademark, a related application is required, along with a power of attorney and the payment of the renewal fee. If renewal is not requested within the specified period, a trademark can still be renewed up to six months later on payment of a fine.
What registration fees apply?
There are no registration fees.
What is the usual timeframe from filing to registration?
The timeframe from filing to registration is hard to predict. On average, it is five to seven months, provided that:
- the examiner does not refuse the mark on absolute or relative grounds; and
- no opposition is filed.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Third parties with a legitimate interest can oppose an application, invoking either absolute or relative grounds.
An opposition is examined by the Administrative Trademark Committee and must be filed in writing. The writ of opposition contains:
- the grounds of opposition;
- the opposed trademark;
- the identity of the opponent and that of the owner of the opposed mark;
- the extent of the opposition; and
- the particulars of the decision against which the opposition is directed.
Proof of use is provided as a defence during opposition proceedings. Accordingly, if the trademark on which the opposition is based has been registered for more than five years, the applicant can call on the opponent to submit evidence that:
- the mark has been used in respect of the relevant goods or services on which the opposition is based in the five years preceding the date of publication of the opposed application; or
- there are proper reasons for non-use.
Failure to meet these requirements will result in rejection of the opposition for procedural reasons and the case will not be examined on its merits.
What is the usual timeframe for opposition proceedings?
The term for filing an opposition is three months from the publication of the decision accepting the mark on the website of the Ministry of Economy and Development’s General Secretariat of Commerce and Consumer Protection. This term is not extendable. The opposition hearing is usually scheduled within three to five months from filing. The related decision is usually issued within five to eight months from its adjudication.
Are opposition decisions subject to appeal? If so, what procedures apply?
Administrative Trademark Committee decisions are subject to recourse before the Administrative Court of First Instance within 60 days (90 days in the case of foreign entities) from notification of the decision to the losing party. Decisions of the First-Instance Administrative Court are subject to appeal before the Administrative Court of Appeal.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
A trademark can be cancelled, in whole or in part, for non-use if:
- it has not been put to genuine use by its owner within five years from the date of the registration in connection with the goods or services in respect of which it is registered; or
- such use has been suspended for an uninterrupted period of five years preceding the filing of the cancellation petition.
Where the ground for cancellation exists in respect of only some of the goods or services for which the trademark is registered, the trademark will be cancelled only with regard to those goods or services.
If the owner has commenced or resumed use of the goods or services between the completion of the five-year period and the filing of the cancellation petition, the trademark will not be revoked. However, use or resumption of use less than three months before the cancellation petition is filed will not be considered where the preparations for the commencement or resumption of use took place after the proprietor became aware of its potential filing.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
A trademark can be revoked, in whole or in part, if:
- as a consequence of acts or inactivity on the part of the rights holder, the trademark has become of common use or the common name in the trade for a product or service in respect of which it is registered; or
- by reason of the mark’s use in connection with the goods or services for which it has been registered by its owner or with the owner’s consent, it is likely to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
A trademark may be declared invalid if it should not have been registered in the first place because such registration breached the provisions regarding absolute or relative grounds for refusal.
A trademark is not declared invalid even if it is registered in breach of Articles 123(1)(b), (c) and (d) of the Trademark Law (4072/2012) if such grounds (ie, the trademark is devoid of any distinctive character or is descriptive or generic) did not exist at the time of filing the petition for a declaration of invalidity due to the fact that the trademark has since acquired distinctive character as a result of its use.
Decisions ordering the revocation of a mark or a declaration of invalidity take effect only when they become final.
Who may file a request for revocation and what is the statute of limitations for filing a request?
A request for revocation may be filed by any natural person or legal entity that can prove a legitimate interest. In case of the deceptive use of a mark, revocation may also be requested by chambers of commerce and consumer associations.
What are the evidentiary and procedural requirements for revocation proceedings?
Requests for revocation and declaration of invalidity are filed before the Administrative Trademark Committee. The plaintiff bears the burden of proof, but the committee or the administrative courts may reverse this burden of proof in the case of cancellation for non-use.
What is the appeal procedure for cancellations or revocations?
Administrative Trademark Committee decisions are subject to recourse before the First-Instance Administrative Court within 60 days (90 days in the case of foreign entities) from notification of the decision. Decisions of the First-Instance Administrative Court are subject to appeal before the Administrative Court of Appeal.
Cancellation and revocation decisions take effect as soon as they become final and have no retroactive effect.
What is the procedure for surrendering a trademark registration?
A trademark owner may surrender the trademark for all or part of the goods or services for which it is registered at any time. If the mark is subject to a licence, the owner must prove that the licensee has been duly informed of its intentions to surrender the mark.
Which courts are empowered to hear trademark disputes?
Pursuant to Law 2943/2001 (Articles 6 to 11), special divisions have been established for Community (now EU) trademarks in the civil first and second-instance courts of Athens and Thessaloniki.
The specialised courts also hear national trademark infringement disputes when they are competent ratione loci. According to the prevalent opinion in legal theory and related case law, said divisions are not competent for preliminary proceedings (eg, temporary restraining orders and injunctions); such proceedings are tried by local courts. However, if the Athens and Thessaloniki courts are competent ratione loci, the proceedings are introduced in the EU trademark divisions.
Where these courts 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 – this is 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; and
- a main infringement action – proceedings are initiated via an introductory writ, filed before the competent court of first instance, which is served upon the defendant. 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, which is very unlikely).
The intentional infringement of a trademark is a criminal offence. Criminal prosecution, however, does not take place ex officio. 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. As a rule, 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 10 to 14 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.
According to Articles 178 to 206 of the recent Law 4512/2018, which was published on 17 January 2018, as from 17 October 2018, use of mediation will be compulsory in legal disputes that arise from trademark infringements. It remains to be seen how the new rules will be implemented and in which way this new practice will change the landscape in IP litigation. It is worth noting, however, that the Administrative Plenary of the Greek Supreme Court recently held that compulsory mediation in civil disputes is inconsistent with the Greek Constitution.
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, Part 3), 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;
- limitation of a trademark right;
- exhaustion of trademark rights; and
- time bar/prescription.
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.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
Both trademark applications and registrations can be assigned. There is no need for the business of the assignor to be transferred along with a trademark. A trademark may also be assigned for part of the goods or services that it covers.
The assignment deed must be in writing and, although it is valid inter partes on its execution, it must be recorded in order to be enforceable against third parties.
Assignment of an earlier trademark which has been cited against the registration of an application will allow registration of that application, irrespective of when such assignment takes place and even during proceedings before the Administrative Court of Appeal.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
Licence agreements must be executed in writing and may be recorded on the petition of either the licensor or the licensee, duly authorised by the licensor.
There is no longer any need for the Administrative Trademark Committee to examine and approve licence agreements.
Licence agreements that have not been registered are not invalid. However, according to the leading opinion, registration is necessary in order for the licensee to claim and enforce its rights against third parties.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
License agreements typically include provisions on:
- the extent and scope of the agreement (for all or part of the goods and services, exclusive or non-exclusive);
- the right to grant sub-licences; and
- the duration of the agreement (ie, fixed term or indefinite) and the grounds for its termination.
Quality control clauses or other substantive law requirements – for example, that the licence must not deceive consumers – are not conditions of a valid licence.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
A pledge or other right in rem may be recorded against a trademark. Such recordal may also be effected by the receiver following a bankruptcy order.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
There are clear areas of overlap between trademarks and other IP rights. The object of trademark protection can also be protected by other IP rights, provided that the protection criteria of such rights are met. Thus, for example, device marks may enjoy design and, in certain circumstances, copyright protection. Slogans that are significantly original or creative may also enjoy copyright protection.
Shapes of products or their packaging, trade dress, logos and business names – as well as other unregistered rights – may, in certain circumstances, enjoy similar protection to that afforded to trademarks under unfair competition law.
The protection of utility models can also be considered in some cases (eg, in the case of shapes or products and their packaging).
In light of the above, it is crucial for rights holders to consider the comparative advantages or disadvantages of all IP rights in the context of their decision-making process.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The regulation of electronic telecommunications in Greece is vested in the Hellenic Telecommunications and Post Commission, which is an independent administrative authority.
Any natural person or legal entity, Greek or foreign, irrespective of whether it is established in Greece, can own a ‘.gr’ or ‘.ελ’ domain name.
The main legal framework with respect to domain names can be found in the Regulation on the Management and Assignment of Domain Names, which was most recently amended in March 2018. The regulation sets out the procedures for registering domain names with the country-code top-level domain ‘.gr’ or ‘.ελ’ and the grounds for cancellation petitions that are heard by the commission, which may also include a request for the transfer of the contested domain name to the petitioner. Commission decisions can be appealed to the Athens Administrative Court of Appeal within 30 days (60 days in case of foreign residents) of their official notification to the parties.
The Greek courts usually attribute a quasi trademark or distinctive signs function to domain names used for the identification of the businesses or affairs of domain name owners.
The unauthorised or illegal use of a trademark as a domain name can be considered to be an act of trademark infringement and unfair competition. In such cases, the trademark owner may request the temporary deactivation of the domain name or the prevention of access to the domain. The prevention of access, however, has yet to be tested in practice.