Enforcement

Trademark 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.
Remedies

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.