Legal frameworkDomestic law
What is the primary legislation governing trademarks in your jurisdiction?
Greek Law No. 4072/2012 (Part C - articles 121 to 196 re Trademarks) as amended by Law No. 4155/2013 and Law No. 4281/2014. The new Greek law implementing Trade Marks Directive (EU) 2015/2436 is expected to be voted by the parliament at the end of 2019 following the public consultation completed in February 2019.International law
Which international trademark agreements has your jurisdiction signed?
Greece has signed the following international trademark agreements:
- the Madrid Protocol (Greek Law No. 2783/2000);
- the Paris Convention (Greek Law No. 66/1983); and
- the Nice Agreement (Greek Law No. 2505/1997).
Which government bodies regulate trademark law?
The Trademark Office is an office of the General Secretariat of Commerce and Protection of the Consumers, which is a section of the Ministry of Development and Investment.
Registration and useOwnership of marks
Who may apply for registration?
Any natural or legal person can apply for a Greek trademark registration.Scope of trademark
What may and may not be protected and registered as a trademark?
A trademark may consist of any sign capable of being represented graphically, which is capable of distinguishing the goods or services of one undertaking from those of other undertakings.
In particular, a trademark may consist of words, names, company names, pseudonyms, designs, letters, numerals, colours, sounds, including musical phrases, the shape of the goods or of their packaging and advertising messages (slogans) (article 121 of Part Three ‘Trademarks’ of Law No. 4072/2012 as amended by Law No. 4155/2013 - referred to as Trademark Law No. 4072/12).
‘Non-traditional’ trademarks are protected, provided that as with any other trademark, they can be represented graphically. Therefore, trade dress or get-up and holograms are protectable under the current law.
Currently, non-traditional marks that can only be reproduced indirectly (ie, by a description) cannot be filed with the Greek Trademark Office. Following harmonisation with the Trade Marks Directive, which is not yet in effect, any sign with a representation that is ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’ will be protectable.Unregistered trademarks
Can trademark rights be established without registration?
Unregistered ‘distinctive signs’ are protected according to articles 13 to 15 of the Unfair Competition Law No. 146/1914 (as amended). The unregistered sign must possess distinctive character and must have been used in commercial transactions in a systematic, continuous, substantial way for a long time, sufficient for the sign to have been established in the market as a distinctive feature of the enterprise using it.
Furthermore, unregistered trademarks that constitute a personal or a company name are protectable under special provisions of civil and commercial laws that protect the name of a person and the company names.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
Under the relative grounds for refusal and according to article 124(2)(c), earlier marks are:
trademarks which, on the date of application for registration of the trademark, or, where appropriate, of the priority claimed in respect of the application for registration of the trademark, are well known in the sense in which the words "well known" are used in article 6bis of the Paris Convention.
Furthermore, under article 124(3)(c):
A trademark shall not be registered where it causes likelihood of confusion with a trademark that has been registered and is being used abroad at the time of filing the application for registration and where the applicant was acting in bad faith when he filed the application for the trademark.
A famous foreign trademark is protected, even if not used domestically, when 'bad faith' can be proved (eg, when there exists evidence that the applicant was in cooperation with the foreign entity entitled to file or use the mark).
If 'bad faith' can be proved the foreign entity can file an opposition, a declaration for invalidity, as well as be protected with the measures provided by the civil and penal courts.The benefits of registration
What are the benefits of registration?
The benefits of registration include access to both administrative, as well as to civil and penal law proceedings for the protection against unlawful use or registration of an infringing sign. Enforcement is easier than for a non-registered mark. The mere submission of the trademark certificate is sufficient for a legal action against the unauthorised use of an identical sign. Trademark registration is prima facie evidence of ownership and validity of the same. Trademark owners that have filed a general special request are notified by the customs authorities for suspected unauthorised goods and seizure by customs authorities of imported unauthorised goods is available to trademark owners.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
The only documentation required to file the trademark application is a power of attorney. No legalisation of the power of attorney is required. The representation of the mark may be filed electronically or by submitting to the Trademark Office the application in hard copy and electronic format (CD or USB stick).
Trademark searches are not required. Trademark searches are performed by local counsel and prevent objections by the examiner, since both absolute and relative grounds of refusal are examined by the Trademark Office.
The official fee for a trademark application in one class is €110 and for each additional class up to 10 classes the additional official fee is €20. Furthermore, the official fee issued by the Association of Attorneys for the representation of the trademark owner is €214 for one trademark application.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
The registration procedure typically lasts six to eight months.
Registration comes into effect three months following the publication of the examiner’s decision accepting the registration of a trademark application, provided no opposition is filed. In the latter case, registration comes into effect by filing to the Registry the finalisation certificate for the proceedings before the administrative courts and the administrative trademark committee.
The minimum cost to obtain a trademark registration in Greece in one class is approximately €450.
Possible reasons that may increase the estimated time and cost are:
- request by the examiner to amend and complete irregularities or deficiencies in the application to be rectified within one month from the request (article 138 of Trademark Law No. 4072/12);
- objections by the examiner that are based on absolute or relative grounds for refusal, which are notified by email usually within one month from the application date. A response must be submitted within one month from the notification of the examiner’s objections. The response may include:
- withdrawal of trademark application;
- limitation of goods or services;
- submission of a letter of consent by the owner of a conflicting trademark application or registration; and
- observations in support of the application,
- the examiner issues their final decision regarding the registration or refusal of the trademark application usually within one month from the submission of the response (article 139 of Trademark Law No. 4072/12); and
- opposition filed by a third party within three months from the publication of the examiner’s decision on the official website of the Trademark Office (article 140 of Trademark Law No. 4072/2012).
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
Greece uses the Nice Classification system. Multi-class trademark applications are acceptable.
The official fee for each additional class up to the tenth is €20. No further fee is paid for more than 10 classes of goods or services (article 179 of Trademark Law No. 4072/12).Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The examiner first examines the formalities and possible irregularities or deficiencies in the application. If any of these are found, the examiner sends an invitation to the applicant or their representative by email to rectify the irregularities or deficiencies within one month from the invitation (article 138 of Trademark Law No. 4072/12).
Furthermore, the examiner examines the trademark application of the basis of both absolute and relative grounds for refusal. The examiner notifies their objections by email to the applicant or their representative within one month from the application date. A response must be submitted within one month from the notification of the examiner’s objections. The response may include:
- withdrawal of trademark application;
- limitation of goods or services;
- submission of a letter of consent by the owner of a conflicting trademark application or registration; and
- observations in support of the application.
The examiner issues their final decision regarding the registration or refusal of the trademark application usually within one month from the submission of the response (article 139 of Trademark Law No. 4072/12).
The examiner’s decision is published on the official website of the Trademark Office.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
A trademark or service-mark application may be filed without prior use of the same and no proof of use is required to be submitted for its registration.
For purposes of defence in a third-party non-use cancellation action the mark should be put to genuine use in connection with the goods or services in respect of which it is registered within a continuous period of five years from registration. Such use must not have been suspended for a continuous period of five years after the registration date (article 160(1)(a) of Trademark Law No. 4072/12).
Foreign trademark applications are granted a right or priority of six months from the date of the application in the home country. The priority certificate must be filed within three months from the application date in Greece (article 177 of Trademark Law No. 472/2012).
Registration comes into effect three months following the publication of the examiner’s decision accepting the registration of a trademark application, provided no opposition is filed. In the latter case, registration comes into effect with the recordal of the finalisation of all legal proceedings before the administrative courts and the administrative trademark committee.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
Marking is not mandatory. The internationally used symbols ™ and ® may be used, in the case of an application and registration.Appealing a denied application
Is there an appeal process if the application is denied?
A decision of the examiner that denies registration of a trademark or service mark application for all or for certain goods or services can be appealed with the Administrative Trademark Committee (ATC) within 90 days from the notification of the examiner’s decision (articles 144 and 177(4) of Trademark Law No. 4072/12).
The appeal is heard before the ATC within four to eight months from the filing of the appeal and the decision is issued within four to eight months from said hearing (article 145 of Trademark Law No. 4072/12).
The decision of the ATC can be appealed with the Administrative Court of First Instance in Athens. A second appeal is possible with the Administrative Court of Second Instance in Athens. For points of law the decision following the second appeal can be annulled by the Conseil d’Etat, which is the high court on administrative matters (article 146 of Trademark Law No. 4072/12).
Civil courts have no jurisdiction on matters regarding the registrability and validity of trademarks and the civil courts are bound by the irrevocable decisions of the ATC and the administrative courts in these matters (article 158 of Trademark Law No. 4072/12).Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
The examiner’s final decision regarding the registration of a trademark application is published on the website of the Trademark Office. The time limit for an opposition by a third party is three months from the publication date (article 140 of Trademark Law No. 4072/12). The basis for the opposition may be absolute or relative grounds for refusal according to the articles 123 and 124 of Trademark Law No. 4072/2012. Any entity having a legal interest can oppose on the basis of absolute grounds for refusal (article 140(2) of Trademark Law No. 4072/2012).
Once the opposition is filed, a hearing date is set to take place before the ATC in four to six months’ time. Within this time limit the case may be settled by the parties. At the hearing of the opposition proceedings, the trademark applicant may request proof of use of the prior trademark that constitute the basis of the opposition for the goods or services of the contested trademark application mentioned in the notice of opposition (article 143 of Trademark Law No. 4072/2012).
Cancellation of a trademark owing to invalidity is sought after registration (article 161 of Trademark Law No. 4072/2012). The cancellation action is filed with the ATC and involves a similar proceeding to the opposition proceeding. Similarly, for a cancellation Action owing to non-use (article 160 of Trademark Law No. 4072/2012).
The approximate cost for a third-party opposition or cancellation proceeding before the Administrative Trademark Committee (ATC) is between €1,000 and €2,000. The ATC’s decisions are appealed with the administrative courts of first and second instance. For points of law annulment can be sought before the Conseil d’Etat.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
A registration is valid for 10 years and can be renewed every 10 years indefinitely (article 148 of Trademark Law No. 4072/12). No proof of use is required to be submitted for registration or renewal purposes.Surrender
What is the procedure for surrendering a trademark registration?
At any time after registration, a Greek trademark may be surrendered by its proprietor in respect of some or all the goods and services. The surrender is submitted to the office in writing with an application for surrender, which becomes effective on the date of entry in the Trademarks Register with an ex nunc effect. The proprietor must submit proof that the licensees have been informed about its intention to surrender its rights in the trademark.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
A trademark might also be protected by copyright if it constitutes an original 'creative work' under copyright law. Similarly, a trademark that is a design (ie, a logo or shape mark, packaging, feature of decoration) might also be protected by a design.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The competent authority managing .gr and . domain names is the Hellenic Telecommunications and Post Commission (EETT). The procedure for obtaining a .gr and . domain name or for becoming a registrar for .gr and . domain names is governed by the provisions of EETT’s regulations and amendments. The current regulation 843/2 in effect was published on 19 March 2018 and amended in September 2018 to incorporate provisions of the General Data Protection Regulations. A domain name is cancelled and transferred to the claimant if it was registered by an entity that does not have the right in the domain name and provided that it was filed or is being used in bad faith.
Licensing and assignmentLicences
May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?
Licences for international registrations designating Greece are recorded at the World Intellectual Property Organization. An exclusive or non-exclusive licence may be recorded, for some or all of the goods or services for which the trademark is registered and for the whole or part of the Greek territory. The licensing agreement must be in writing, notarised and legalised with apostille. The recordal is requested either by the proprietor or by the licensee provided the latter is authorised by the proprietor. The proprietor may act against the licensee who violates the provisions of the licensing agreement for grounds such as:
- the duration of the licence;
- the form under which the trademark can be used;
- the type of the goods or services, for which the licence was granted;
- the territory in which the trademark can be used;
- the quality of the goods manufactured; or
- the services provided under the licence.
The proprietor can terminate the licensing agreement with a simple declaration recorded in the Registry. The licensee can initiate proceedings for the protection of the trademark, especially when the proprietor has been notified about the infringement and does not initiate proceedings within a reasonable period of time. When the proprietor files a civil law suit against an infringer, the licensee may intervene and demand compensation for its own damages.Assignment
What can be assigned?
The right in a trademark application or registration can be assigned in respect of some or all of the goods or services for which it is registered or applied for, regardless of the goodwill or other business assets. If the entire business is transferred, this includes trademark applications or registrations, unless there exists an agreement that excludes their transfer or unless the circumstances clearly dictate otherwise (article 131 of Trademark Law No. 4072/12).Assignment documentation
What documents are required for assignment and what form must they take? What procedures apply?
The assignment of a trademark requires the assignment agreement to be made in writing (article 131(3) of Trademark Law No. 4072/12) and recorded in the Registry, having effect with regard to third parties from the date of its recordal. The assignment agreement includes the details of the assignor and assignee, the details of the trademark specifying the goods or services and the territory (all of Greece) in respect of which the assignment is made. The assignment must be signed by both the assignor and the assignee in presence of a notary and legalised by the Greek Consulate or with an apostille.Validity of assignment
Must the assignment be recorded for purposes of its validity?
Yes. If the assignment is not recorded, the assignment is valid only inter partes (article 131(3) of Trademark Law No. 4072/12).Security interests
Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?
A trademark may be given as security or be the subject of rights in rem, may be levied in execution and constitutes an assent available for distribution in case of insolvency (article 133 of Trademark Law No. 4072/2012). The documents establishing a security interest should be notarised and legalised with an apostille and should be recorded in the Trademarks Registry held at the Trademark Office to be enforceable with regard to third parties. In the case of bankruptcy of the trademark owner or applicant, the request for recording the security can be filed by the receiver or trustee.
EnforcementTrademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
Legal proceedings to enforce the rights of a trademark owner can be initiated in the civil or criminal courts or both. A civil action can be brought against the infringer at the special Civil Court of First Instance in Athens and Thessaloniki. Injunctions and temporary restraining orders can be brought at all civil courts of first instance in Greece (articles 150 to 157 of Trademark Law No. 4072/12). The complainant requests the termination of the infringement, its prevention in the future and damages, and information regarding all the details in relation to the infringement, and can apply for the preservation of the evidence in respect of the alleged infringement. The complainant may also request retraction of the goods infringing the trademark right and the material used from commerce and removal of the infringing sign or destruction of the goods bearing the infringing sign, as well as information about the infringer’s financial and commercial documents. The expenses for execution of the above remedies are paid by the infringer unless such remedies are requested against an intermediary. If the court orders prevention of the infringement for the future, any violation is punished by a fine of €3,000 to €10,000 and detention for up to one year.
The civil procedure at first instance takes one to two years to be completed. The appeal procedure at the second instance court may also take one to two years and the annulment on points of law before the High Court approximately two to three years.
The minimum cost for an injunction is approximately €1,500 and the minimum cost for a lawsuit before the first instance court is approximately €2,500.
The criminal court in a criminal procedure may decide imprisonment (at least six months) and pecuniary penalties (at least €6,000) (article 156(1) of Trademark Law No. 472/2012). In cases of identical sign and identity or high similarity of the goods or services or when the damage caused is high on a commercial scale, imprisonment is for at least two years and the pecuniary penalty between €6,000 and €30,000 (article 156(2) of Trademark Law No. 472/2012). Further provisions of the criminal laws may apply, such as for fraud or forgery).
Customs authorities are requested to suspend the release of counterfeit goods or allow the removal and destruction thereof following an application by the trademark owner.Procedural format and timing
What is the format of the infringement proceeding?
The average amount of time from initiating infringement proceedings before the first instance civil court through trial is three to nine months. The court constitutes of a single judge or a panel of judges. Under the current civil procedure rules, no oral hearing takes place. Within 100 days from the filing of the civil lawsuit, the parties must submit all relevant documents, evidence and experts’ affidavits (if applicable), and within 15 days after that date the parties must submit observations in reply. The hearing takes place by the judge or panel of judges based on documentation only. At that hearing the judge may decide to schedule live testimony within two months and call the parties’ witnesses to testify. The average amount of time from the end of the trial to the issuance of judgment is between six months and one year.
A petition for an injunction can be filed by the trademark owner or the licensee, as with the civil lawsuit. The petition is heard in the course of a single hearing, which normally is inter partes, and only in exceptional cases will the judge allow no notice to the defendant (article 153(4) of Trademark Law No. 4072/2012).
The injunction is issued in one to three months or, alternatively, the injunction proceedings takes place in two stages. The first stage is a brief hearing (inter partes or not, depending on the case and the judge’s opinion) before the judge in service, following which a preliminary injunction is issued on the same day or on the next day at the latest. The second stage is a hearing taking place following notice to the defendant. The injunction in this case is granted or denied in one to three months.
A seizure order can be issued for goods bearing the infringing sign to prohibit the import thereof or the placement into the market (article 153(2) of Trademark Law No. 4072/2012). The seizure of the infringer’s assets and bank accounts is ordered when there is danger of the payment of damages for an infringement on commercial scale (article 153(3) of Trademark Law No. 4072/2012).
The procedure following a criminal lawsuit usually takes much longer than the civil procedure, up to five or even seven years.Burden of proof
What is the burden of proof to establish infringement or dilution?
The burden of proof lies with the party that asserts the infringement facts. The trademark owner does not have to prove the intentions of the infringer for the infringement and its continuation in the future to be prohibited. If the plaintiff can prove that the infringement was intentional, then damages for actual losses and compensation for non-material losses may be awarded by the court (article 150(5) of Trademark Law No. 4072/2012).
The mere submission of the trademark registration certificate constitutes full evidence of the infringement if the infringement is made by a third party using (for identical goods or services) an identical sign, or a sign that only differs in elements not altering the distinctive character of the infringed trademark (article 150(11) of Trademark Law No. 4072/2012).
In cases of acquiescence, the trademark owner must prove that they were not aware of the five years’ use or that the infringer was acting in bad faith (article 127(1) of Trademark Law No. 4072/2012).Standing
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
The trademark owner may seek a remedy for an alleged trademark violation in civil and criminal proceedings. The trademark applicant who has already been using the trademark for a significant time period may seek protection under unfair competition law and with analogous application of the provisions of trademark law.
Exclusive and non-exclusive licensees may seek all remedies with the consent of the licensor. The exclusive licensee may act without the consent of the licensor when the latter has been informed and taken no action against the infringer within an appropriate time period, unless there exists an agreement to the contrary (article 132(4) of Trademark Law No. 4072/12).
In addition, the exclusive and non-exclusive licensee can intervene in proceedings claiming compensation for its own damages (article 132(5) of Trademark Law No. 4072/12).Border enforcement and foreign activities
What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?
The trademark owner (or licensee) is entitled to prohibit the mere transit of goods bearing a sign which infringes the trademark, even if the goods are destined to be released in another country or if they are imported to be re-exported (article 125(4)(a) of Trademark Law No. 4072/12).
In addition, the trademark owner is entitled to prohibit the affixing of the trademark on genuine goods intended to be placed in the market with no sign (article 125(4)(a) of Trademark Law No. 4072/12).
Furthermore, the trademark owner is entitled to prohibit the removal of the trademark from genuine goods and the placement thereof in the market with no sign or with another sign on them (article 125(4)(a) of Trademark Law No. 4072/12).
The measures are taken with the assistance of the customs authorities, the prosecutor and the initiation of penal proceedings and include seizure and destruction of the infringing goods at the expense of the infringer, claiming damages and fines, demanding Information about the origin of the Infringing goods and the importer as well as the publication of the court's decision.Discovery
What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
A party to the proceedings that submits evidence of likelihood of trademark infringement and asserts that relevant evidence is within the possession or control of the defendant may request a court order for the submission of such evidence (article 151(1) of Trademark Law No. 4072/12). If the trademark infringement takes place on a commercial scale, the submission of banking, financial or trade documents can be requested (article 151(2) of Trademark Law No. 4072/12). The court should take appropriate measures so that the confidentiality of the information is protected.
The defendant may be obliged by the court to submit of information in respect of the origin and the distribution networks of goods or services regarding the infringement of the trademark. The same applies to the possessor of such goods on a commercial scale, the user or provider of the services on a commercial scale and any other intermediary in the manufacture or distribution of the goods or provider of the services, again on a commercial scale. Said information includes all details of the persons and entities involved in the production and distribution, former possessors and receiver merchants, and the quantities and prices of the goods or services (article 151(4,5) of Trademark Law No. 4072/12).
Severe pecuniary penalties up to €100,000 are imposed on the party that unduly does not comply to submit the information ordered by the court (article 151(8) of Trademark Law No. 4072/12).
The information obtained accordingly cannot be used for the criminal prosecution of the person ordered to submit such information (article 151(10) of Trademark Law No. 4072/12).Timing
What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
A preliminary injunction is issued in one to three months or, alternatively, the injunction proceedings takes place in two stages. The first stage is a brief hearing (inter partes or not, depending on the case and the judge’s opinion) before the judge in service, following which, a preliminary injunction is issued on the same day or on the next day at the latest. The second stage is a hearing taking place following notice to the defendant. The injunction in this case is granted or denied in one to three months.
The minimum time for the completion of an infringement action up to the civil court’s final decision is one to two years. If the civil court’s decision is appealed at the court of appeals and at the Supreme Court, the time frame is extended for another two to five years.
The time frame for a criminal action at first instance is approximately five years. If the criminal court’s decision is appealed at the court of appeals and at the Supreme Court, the time frame is extended for another two to five years.Limitation period
What is the limitation period for filing an infringement action?
The time limit for claiming damages is five years from the end of the year that the infringement took place for the first time. The general time limit for filing an infringement action is 20 years from the date the trademark owner first becomes aware of the infringement.Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
The minimum cost for an injunctive relief or an infringement action is approximately €1,500 to €3,000.
The costs that a successful plaintiff can recover are awarded by the court, depending on the case.Appeals
What avenues of appeal are available?
A preliminary injunction cannot be appealed.
The civil court’s decision is appealed at the court of appeals and at the Supreme Court for points of law. The same holds for the decision of a criminal court.Defences
What defences are available to a charge of infringement or dilution, or any related action?
Defences include the following:
- that there is no likelihood of confusion;
- prior right of the defendant in a locally limited area;
- trademark registration of the defendant provided that the civil court stays proceedings until a final decision by the administrative courts is issued on the matters of registrability and validity of the trademarks;
- the trademark owner’s right can be questioned before the civil court; however, the civil court should stay the proceedings until a final decision by the administrative courts is issued on the matters of registrability and validity of the trademark;
- use of the first name or of the second name of a person;
- use of a company name and address;
- use of words or signs of common use;
- use of descriptive signs;
- use of a trademark in good faith to describe the source of origin of the goods or the services, in particular for spare parts and components; and
- the trademark owner acquiesced provided that he or she was aware of the use of the similar sign for five continuous years, unless the filing of the latter mark was made in bad faith.
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?
The following remedies are available to the successful party in an action for trademark infringement.
The main remedy is prohibition of the infringement and its continuation in the future (article 150(1) of Trademark Law No. 4072/2012). By prohibiting the infringement, additionally the court may order:
- retracting the goods with the infringing sign from commerce and, if required, retracting the materials that were mainly used for the infringement;
- the removal of the sign infringing the trademarks, or if this is not possible, final retraction of merchandise with the infringing sign from commerce; and
- destruction of the merchandise.
All of the above are effected at the expense of the infringer, unless there are special circumstances for the opposite (article 150(2) of Trademark Law No. 4072/2012).
If the court orders the prevention of an act, the penalty for each violation of such order is between €3,000 and €10,000 and detention up to a year.
If it is proved that the infringement was intentional, then damages for actual losses and monetary compensation for non-material losses are awarded by the court (article 150(5) of Trademark Law No. 4072/2012) plus the expenses for the lawsuit (article 152 of Trademark Law No. 4072/2012 and articles 173 to 192 of the Code of Civil Procedure).
Preliminary injunctive relief is available even without notice to the defendant (article 153 of Trademark Law No. 4072/12) in urgent cases against the infringer and the intermediary third parties (article 153(8) of Trademark Law No. 4072/12).
Seizure of the assets of the infringer and of its bank accounts can be requested if the infringement takes place on a commercial scale and there exist circumstances that put in danger the compensation for losses or when the evidence is sufficient to indicate imminent infringement of the trademark (article 153(3) of Trademark Law No. 4072/12).
The court may order that the defendant submits all the details and information in respect of the origin and the distribution networks of goods or services regarding the infringement of the trademark. The same can be requested to be submitted by the possessor of such goods on a commercial scale, by the user or the provider of the services on a commercial scale and by any other intermediary in the manufacture or distribution of the goods or provider of the services, again on a commercial scale. The information includes all details of the persons and entities involved in the production and distribution, former possessors and receiver merchants, and the quantities and prices of the goods or services (article 151(4,5) of Trademark Law No. 4072/12). Severe pecuniary penalties up to €100,000 may be imposed on the party that unduly does not comply to submit the information ordered by the court (article 151(8) of Trademark Law No. 4072/12).
The trademark owner (or licensee) is entitled to prohibit the mere transit of goods bearing a sign that infringes the trademark, even if the goods are destined to be released in another country or if they are imported to be re-exported (article 125(4)(a) of Trademark Law No. 4072/12).
In addition, the affixing of the trademark on genuine goods which were intended to be placed in the market with no sign can be prohibited (article 125(4)(a) of Trademark Law No. 4072/12). Furthermore, the removal of the trademark from genuine goods and the placement thereof in the market with no sign or with another sign on them can also be prohibited (article 125(4)(a) of Trademark Law No. 4072/12).
It can be requested that the court’s decision is published in the media and on the internet at the expense of the infringer. The court decides the proper form of publication, taking into account the principle of proportionality (article 157 of Trademark Law No. 4072/12).
The remedies in a criminal procedure are imprisonment (at least six months) and pecuniary penalties (at least €6,000) (article 156(1) of Trademark Law No. 472/2012). In cases of identical sign and identity or high similarity of the goods or services or when the damage caused is high on a commercial scale, imprisonment is for at least two years and the pecuniary penalty between €6,000 and €30,000 (article 156(2) of Trademark Law No. 472/2012). Further remedies are provided according to other provisions of the criminal laws that may apply, such as for fraud or forgery).ADR
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
No ADR techniques are available for oppositions and cancellations, for which the administrative courts are competent.
ADR is available in civil courts for infringement disputes. In practice, ADR has not been used up to now.
Update and trendsKey developments of the past year
Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?
The draft new Greek law implementing Trade Marks Directive (EU) 2015/2436 was under public consultation in January 2019. One of the issues discussed is whether the ex officio examination of relative grounds for refusal will be maintained in the new law. Under the draft law there will be no longer a requirement for the graphic representation of a trademark and new types of mark are introduced. Proof of use shall also apply in infringement proceedings. Voluntary mediation and a cooling-off period are introduced. Infringement actions shall also be possible against a registered trademark.