i Impact of EU law
Greece is late in implementing Directive (EU) 2015/2436 on the harmonisation of national laws of EU Member States on trademarks. The Directive should have been implemented in Member States by 14 January 2019. The new national legislation implementing this Directive is likely to be published and come into force at the end of October 2019.
ii Types of marks
The following types of marks are capable of being protected:
- letters, numbers, names and abbreviations;
- slogans and short phrases;
- colours and colour combinations;
- designs, including 3D designs;
- the shape of the product, or of its packaging, product labels and trade dress; and
- company names and distinctive titles used to identify the premises where goods or services are offered to consumers.
Non-traditional marks, such as sound, taste, smell and feel, are currently considered not capable of being protected in practice, because they cannot be described or identified in a clear, precise, consistent and unambiguous manner, or at least there is currently no consensus as to the method that would enable a clear, precise, consistent and unambiguous description of such signs.
The Greek Trademark Office accepts applications for both product marks and service marks, as well as for collective marks.
iii Basic features of Greek trademark law
The most notable features and peculiarities of Greek trademark law can be summarised as follows. In the process of trademark registration, the Trademark Office carries on an ex officio search for ‘prior rights’, that is, earlier national, European or international registrations, or applications that are identical or similar to the mark applied for.
Under Greek law, trademark rights are particularly strong rights in the context of civil (i.e., enforcement) proceedings. This is because, unlike what happens in other jurisdictions, in Greece it is not possible to challenge the validity of a registered trademark in the context of civil proceedings. To challenge the validity of a trademark, one has to initiate cancellation proceedings before the Administrative Trademark Committee (the Trademark Committee) and the administrative courts. A trademark registration is invalidated only by way of a final judgment.
Greek law provides for a ‘proof-of-use’ defence in the context of opposition, cancellation and revocation proceedings, but not in the context of civil proceedings.
The above features may change as a result of the ongoing legislative process for a new national law on trademarks and the implementation of Directive (EU) 2015/2436.
II LEGAL FRAMEWORK
The Greek law on trademarks consists of Law No. 4072/2012 (Articles 121 to 183), as amended by Law No. 4155/2013. As of August 2019, this Law is under reform to implement Directive (EU) 2015/2436.
Greece has implemented the following EU Directives, which affect its national law on trademarks:
- Directive 2008/95/EC regarding the approximation of the law on trademarks; Directive (EU) 2015/2436, recasting Directive 2008/95/EC, has not yet been implemented into national law; and
- Directive 2004/48/EC on the enforcement of intellectual property rights.
Regulation (EU) No. 608/2013 concerning customs enforcement of intellectual property rights is directly applicable in Greece. Regulation (EU) 2017/1001 on the European Union trade mark (EUTM) is also directly applicable in Greece, and EUTMs are protected according to the provisions of the Regulation.
Greece has also implemented the following international conventions into national law:
- Paris Convention 1883 (Stockholm 1967 version);
- World Trade Organization TRIPS Agreement;
- Hague Convention for international registration of industrial designs, known as the Hague System (Geneva Convention 1999);
- Locarno Agreement (1968) on the international classification of industrial designs;
- Madrid Protocol (1989) regarding international registration of trademarks through the World Intellectual Property Organization (WIPO); and
- Nice Classification Agreement (1957), now consisting of 45 classes of goods and services for trademark registrations.
Cases relating to trademark registration, revocation or cancellation are dealt with by the Trademark Office, the Trademark Committee and the administrative courts. Cases relating to infringements and the enforcement of registered trademarks and other distinctive signs (i.e., company names and non-registered distinctive signs) are dealt with by the civil courts. Cases relating to the registration or cancellation of domain names are dealt with by the Hellenic Telecommunications and Post Commission (EETT), the national regulatory authority for telecommunications and postal services.
Cases relating to the registration process
Trademark applications are dealt with by an examiner, who is a civil servant of the Trademark Office. The Office is a department of the Ministry of Trade. The decisions of the examiner can be appealed before the Trademark Committee, within 60 days of notification.
The Trademark Committee consists of three members and deals with oppositions, revocations and cancellations. Its decisions are appealed before the first instance administrative courts and then, if necessary, to the second instance administrative courts. The decisions of the second instance administrative courts can be appealed to the Greek supreme administrative court, the Council of State. In all these cases, the period in which an appeal to a superior court must be filed is 60 days if the appellant is residing in Greece and 90 days if the appellant is residing abroad.
Cases relating to enforcement of registered trademarks and non-registered distinctive signs
Cases relating to infringements and the enforcement of trademark rights and non-registered distinctive signs are dealt with by civil courts. There are civil courts of first and second instance (the latter being appeal courts). The judgments issued by second instance (appeal) courts can be further appealed before the Supreme Civil and Criminal Court of Greece (the Supreme Court). The time frame to file an appeal, either to a second instance (appeal) court or to the Supreme Court is only 30 days after notification of the judgment, or 60 days if the appellant is residing abroad. Only judgments of a second instance court are enforceable. An appeal to the Supreme Court does not affect the enforceability of the judgment reviewed, unless the Court issues, upon the application of the appellant and under summary proceedings, an order rendering the judgment unenforceable.
According to Article 123 of Regulation (EU) 2017/1001, Greece has designated the civil courts of Athens and Thessaloniki to deal with civil cases relating to the enforcement of EUTMs. These two courts also deal with cases relating to national trademarks and all other intellectual property cases. Therefore, cases relating to trademark infringement committed in any part of northern Greece are dealt with by the civil courts of Thessaloniki, while cases relating to infringements in southern Greece are dealt with by the civil courts of Athens.
In addition to ordinary proceedings, civil courts can issue provisional court orders and summary judgments. Applications for provisional court orders, or summary judgments, are filed with single-member first instance courts. A provisional court order may be issued without a formal court hearing, or even without prior notice to the defendant, within about 10 days of the filing of the application. Provisional court orders are usually issued to attach and preserve evidence, in the manner of an Anton Piller order. However, it is not unusual for a court to issue a provisional cease-and-desist order, prohibiting a defendant from using a certain mark. A summary judgment is issued after a court hearing under summary proceedings, within a period of about six months of the filing of the application. A legal action under ordinary proceedings must always follow, unless the case is settled out of court. A judgment under ordinary proceedings from a first instance court is usually issued within 18 months of the filing of the legal action, while a judgment from a second instance court is usually issued within two years of the filing of an appeal.
The body responsible for the registration and cancellation of domain names is EETT. See Section V.ii for procedures relating to domain names.
iii Substantive law
Registered trademarks are infringed in cases of unauthorised use by a third party leading to (1) likelihood of confusion (including likelihood of association), or (2) dilution, as well as in cases of (3) illegitimate parallel imports, where trademark rights have not been exhausted (see Section VI.iii). In defining those concepts, Greek law follows Directive 2008/95/EC and case law of the General Court of the European Union and the Court of Justice of the European Union (CJEU).
The rules that are more often applied in connection to likelihood of confusion are the following:
- likelihood of confusion is presumed in a case of identicality of both the marks and their respective goods or services;
- likelihood of confusion is assessed on the basis of the respective dominant elements of the different marks, while descriptive or commonly used elements are not taken into account;
- consumers’ attention and awareness is higher in the case of pharmaceuticals, high-value goods and goods addressed to professionals; and
- likelihood of confusion is established when the earlier mark is incorporated as such in the latter.
Here are some notable examples from case law:
- Likelihood of confusion established:
- Likelihood of confusion not established:
- ‘Catherinebijoux’ and ‘CSC Catherine Silver Corner and device’, both for jewellery in Class 14;4
- ‘Jet Oil and device’ and ‘Jet Gas’, both for fuels in Class 4;5
- ‘Clear Guard’ and ‘On Guard’, both for locks in Class 6;6
- ‘Coca-Cola’ and ‘Up Kola’, both for non-alcoholic beverages in Class 32;7
- ‘Clusters’ and ‘Kellogg’s Crunchy Nut Clusters’, both for cereals in Class 30;8
- ‘Aire Alpino and device of a spruce fir tree’ and ‘a device mark representing a spruce fir tree’, both for air fresheners in Class 5;9 and
- ‘Coffee Time’ for cafeteria services in Class 43, and the advertising slogan ‘It’s coffee time – Loumidis’ for coffee products, because the term ‘coffee time’ is of limited distinctiveness only, while Loumidis is a famous coffee brand in Greece.10
In addition to likelihood of confusion, marks with reputation are protected against dilution.
Well-known marks (i.e., marks with a reputation), enjoy additional protection, including protection against likelihood of dilution and bad faith. The prerequisites for establishing dilution are:
- similarity between the earlier and the later mark;
- likelihood of a link in consumers’ minds between the earlier and the later mark;
- unfair advantage in favour of the later mark from the reputation of the earlier mark, or detriment to the reputation of the earlier mark; and
- lack of any due cause justifying such unfair advantage or detriment.
Dilution may exist if:
- the later mark becomes recognisable by consumers faster and with less advertising expenditure (free-riding);
- the later mark is affixed to products of inferior quality, or there is some other negative publicity or negative implications against the earlier mark; or
- there is a lessening of the distinctive value of the earlier mark.
Here are some notable examples from case law:
- The mark of Adidas consisting of ‘three parallel stripes’ has been found to be a mark with reputation that is diluted by the use of a mark consisting of ‘four parallel stripes’ in athletic footwear.11
- The mark ‘Element and device of a tree’ of the well-known leisure and casual clothing company was found to be one with reputation, and dilution was established when a retailer traded clothes with similar marks from other manufacturers.12
- The mark ‘Champion’ of the well-known athletic clothing company was found to be one with reputation, and dilution was established when a local manufacturer launched athletic clothes under the same mark, although in different lettering.13
- Caterpillar’s mark consisting of its company name and black and yellow colours was found to be one with reputation and was granted legal protection, although the yellow colour is widely used in machinery and heavy tools by many other competitors.14
- Lufthansa’s figurative mark, consisting of a bird (stork) in blue and yellow colours, was not considered to be a famous one, but likelihood of confusion was established when a local air carrier used a similar figurative mark accompanied by a different company name.15
Marks that have been registered as trademarks in other countries and enjoy reputation abroad are also protected in Greece, according to Article 6 bis of the Paris Convention (1883); this means that a later national application can be opposed and a later national registration can be cancelled. National legislation has extended this type of protection even to foreign trademarks that do not have reputation, provided it can be established that the later national application was made in bad faith.
Non-registered distinctive signs and company names
Non-registered distinctive signs and company names enjoy legal protection under Articles 13 to 15 of Law No. 146/1914 on unfair competition. The prerequisites for obtaining protection for an earlier non-registered distinctive mark are as follows:
- the mark must be distinctive (either inherently or through use), not descriptive and not commonly used;
- use in the course of trade must be established on the evidence; in the case of marks other than word marks (such as the shape of the product, colours and designs of the packaging), the level of use in the course of trade must be substantially high (i.e., almost to the level of reputation);
- priority of use against the later mark must be established on the evidence; and
- use of the later mark must cause likelihood of confusion, likelihood of association or likelihood of dilution.
Non-registered distinctive signs and company names do not enjoy protection in the whole country, but only in the geographical area where they are used and have become recognisable by consumers;
The remedies are the same as in registered trademarks (see Section IV.v).
Article 1 of Law No. 146/1914 prohibits any act that (1) is committed in the course of trade; (2) is contrary to business ethics and morals; (3) is oriented towards some commercial advantage; and (4) is objectively capable of granting some commercial advantage, which also means that the plaintiff and the defendant must also be competitors. This Article establishes a tort of unfair competition, in compliance with Article 10 bis of the Paris Convention (1883).
Illegitimate use of protected appellations of origin, or protected geographical indications, as well as any illegitimate use of any other geographical terms, all qualify as unfair competition infringements.
III REGISTRATION OF MARKS
i Formalities and process for trademark registration
Greek trademark law retains the prerequisite that a mark must be capable of being represented graphically. However, this prerequisite will soon be abolished because of the forthcoming implementation of Directive (EU) 2015/2436, which has dispensed with the prerequisite of ‘graphical representation’ of the mark to be applied for.
Trademark applications are submitted to the Trademark Office and are adjudicated by a single examiner on both absolute grounds (e.g., lack of distinctiveness, or the mark being descriptive, commonplace, functional, deceptive), and relative grounds (i.e., earlier rights). It is a peculiarity of the Greek trademark system that it provides for an ex officio search for prior rights that is, however, limited to prior national and EUTM registrations and applications, and to prior international trademark registrations with WIPO that designate Greece. With respect to earlier rights, a trademark application or registration (whether national, EU or international) may enjoy international priority under the Paris Convention or the Madrid Protocol.
The state fees for filing a trademark application are €110 for the first class and a further €20 for each additional class. Renewal fees are €90 for the first class, plus €20 for each additional class. The renewal period is 10 years after the filing of the application. State fees are currently under revision and are likely to increase slightly.
The time frame for trademark registration can be as short as about five months after the filing of the application if the examiner raises no objections. This five-month period includes the opposition period, which runs for three months starting from publication of the application on the website of the Trademark Office. If objections are raised by the examiner, or if there is an opposition, the usual time frame for a decision by the Trademark Committee is about 12 months. If the decision of the Trademark Committee is appealed before the administrative courts, the judicial process is exorbitantly long and it can take between seven and 10 years to obtain a judgment from a first instance administrative court, and one more year to obtain a judgment from a second instance administrative court.
An opposition may be filed on account of either absolute grounds (e.g., the mark is non-distinctive, descriptive, in common use) or relative grounds (i.e., prior rights). The time frame to file an opposition is three months after publication of the trademark application on the website of the Trademark Office. The prior rights on which an opposition may be based can consist of prior trademark registrations or applications (national, EU or international designating Greece), or prior non-registered distinctive signs, including company names.
With respect to registered trademarks, priority is determined on the basis of the date of the filing of the application with the Trademark Office. With respect to non-registered rights, priority is determined on the basis of actual use in the course of trade. Use in the course of trade and the date when the use commenced are matters of fact to be established by evidence.
Registration occurs when the decision of the examiner, or the Trademark Committee in the case of opposition proceedings, becomes final; that is, it cannot be appealed before the second instance administrative court. An appeal with the Council of State does not prevent registration, but if the contested judgment is reversed, registration will fail retrospectively.
ii Absolute grounds
On absolute grounds, Greek law follows Article 3 of Directive 2008/95/EC. Absolute grounds for rejecting a trademark application include:
- lack of distinctiveness;
- the mark being:
- functional (including aesthetic functionality);
- inherently deceptive;
- a protected appellation of origin;
- a protected geographical indication; or
- contrary to morality;
- the mark consisting of the name of a state or of a national emblem; or
- the mark being filed in bad faith.
Distinctiveness and descriptiveness are assessed in view of the goods or services applied for. Only directly descriptive marks are incapable of registration; directly descriptive marks are those that describe the goods or services applied for by their literal (vocabulary) meaning. Conversely, marks that are only indirectly descriptive (i.e., they are descriptive by referring to some descriptive implication) are capable of obtaining trademark registration. Common terms are registrable if they are used in an uncommon way (i.e., if the goods or services to which they are to be applied are totally unconnected to those terms). For example, the mark ‘Reflex’ for steam-generating apparatus in Class 11 was found to be distinctive and not commonplace in respect of the goods applied for.16 The mark ‘World Academy of Sports’, filed in various classes, was rejected by the Trademark Committee for lack of distinctiveness and for being deceptive,17 because under Greek legislation, the term ‘academy’ can be used only for certified educational institutions. However, the judgment was reversed by the first instance administrative court and the mark was registered.18
Slogans are registrable if they have some level of originality. For example, the slogan ‘With us you can do everything’ for hand tools and household apparatus in Classes 8 and 21 was found to be distinctive and not commonplace.19
The Trademark Office is very suspicious of marks consisting of geographical terms, because they are likely to be either descriptive or deceptive. However, geographical terms are registrable if it is not reasonable to assert that they indicate the actual place of production of the relevant goods (e.g., terms such as ‘Everest’ or ‘Mont Blanc’ are registrable).
Neologisms (i.e., new words that are a combination of existing words), are, in principle, not registrable, unless they create an impression that is significantly different from the words of which they are composed. For example, the mark ‘Walkman’ filed by Sony for audio devices in Class 9 was found to be distinctive but neither descriptive nor commonplace.20
Acquired distinctiveness (i.e., a secondary meaning acquired through use in the course of trade) can overcome the difficulty of lack of distinctiveness, descriptiveness or the mark being commonplace.
Single colours and simple colour combinations (i.e., consisting of up to three stripes) are usually registrable only if acquired distinctiveness is established.
Bad faith in filing a trademark application is established particularly in cases where a distributor or commercial agent files a mark that is used with the consent of his or her principal, or where one party files a mark that is owned by another party and there is some pre-existing cooperation or at least communications between the two parties. Bad faith can also be established when an applicant files, in Greece, a mark that has a reputation abroad. Finally, bad faith can be established when a trademark is applied for without actual intent to use and with the sole purpose of restricting competition.
iii Prior rights
On prior rights, Greek law follows Article 4 of Directive 2008/95/EC. It is a peculiarity of the Greek trademark system that the Trademark Office makes an ex officio search for prior rights and can reject a trademark application on this ground, even if the owners of the prior rights do not file an opposition. However, this ex officio search by the Trademark Office is limited to prior national or EUTM applications or registrations, and to prior international trademark registrations filed with WIPO under the Madrid Protocol that designate Greece. The Trademark Office does not make an ex officio search for other prior rights, such as company names, or other non-registered distinctive signs; these can prevent registration, but need to be invoked by their owners by way of an opposition. Other prior rights that can prevent registration include earlier industrial designs and copyright.
Prior rights prevent registration if they cause likelihood of confusion, likelihood of association or dilution (see Section II.iii).
iv Inter partes proceedings
Inter partes proceedings may be oppositions, cancellations or revocations.
See Section III.i.
On cancellation, Greek law follows Directive 2008/95/EC. An application for cancellation is filed with the Trademark Committee. The decision of the Trademark Committee can be appealed before the administrative courts (i.e., first instance, second instance and the Council of State); the time limit for appeal is 60 days after notification of the judgment (90 days for foreign appellants). Cancellation occurs when the judgment cancelling the registration becomes final; that is, it cannot be appealed before the second instance administrative courts. The judgment cancelling the registration does not have any retrospective effects. The decision of the Trademark Committee is usually issued within 12 months of the filing of the cancellation, but if it is appealed before the administrative courts, the judicial process can be as long as 12 years.
The legal ground for cancellation is that the trademark should have been rejected because of absolute or relative grounds that were overlooked by the examiner.
If a party has filed an opposition that was rejected, they cannot file a cancellation on the same grounds.
The owner of the contested registration may invoke the proof-of-use defence against the applicant who requests the cancellation on the grounds of earlier rights (see Section III.i).
On revocation, Greek law follows Directive 2008/95/EC. An application for revocation is filed with the Trademark Committee. The grounds justifying revocation are:
- non-use of the trademark during a five-year period from the date of its registration, or non-use during a period of five consecutive years at any time, unless there are proper grounds justifying non-use (see Section III.i); or
- the trademark has become either commonplace or deceptive.
The decisions of examiners can be appealed before the Trademark Committee. The decisions of the Trademark Committee can be appealed before the administrative courts. It is only final judgments (i.e., those that cannot be appealed further before the second instance administrative court) that are recorded with the registry. For more details, see Sections II.ii (cases relating to the registration process) and III.iv.
IV CIVIL LITIGATION
See Section II.ii.
ii Pre-action conduct
Under Greek law, there are no pretrial formalities and there is no pretrial obligatory disclosure as there is in other jurisdictions.
iii Causes of action
Infringement of both registered trademarks and non-registered distinctive signs, including company names, can be established on the basis of either likelihood of confusion (which includes likelihood of association) or dilution (in the case of marks with reputation only), or both. The concepts of likelihood of confusion, likelihood of association and dilution are those provided under EU law (i.e., Directive 2008/95/EC as amended by Directive (EU) 2015/2436) and EU court jurisprudence.
Registered trademarks are also infringed in cases of illegitimate parallel imports (see Section VI.iii).
Domain names are infringed if a domain name has been obtained in bad faith, causing likelihood of confusion with an earlier domain name, an earlier registered trademark or an earlier non-registered distinctive sign (see Section V.ii).
iv Conduct of proceedings
Legal actions (writs) under Greek law tend to be long and detailed, as they need to provide a fully substantiated and detailed statement of facts. If reputation is invoked, the legal action should provide specific and detailed information as to the volume of sales and advertising expenditure, market share and other factors from which reputation can be derived. The plaintiff must serve the legal action to the defendant within 30 days of filing with the court. If the defendant resides abroad, the legal action must be translated into the language of the defendant. The parties are granted a 100-day period from the filing of the legal action with the court (130 days for those residing abroad) to submit to the court written arguments and evidence. An oral hearing usually does not take place.
Witnesses do not give oral evidence during a court hearing. Instead, they make a written testimony under oath before a notary public, a county court or a Greek consular officer (if the witness resides abroad). The written testimonies take place before the trial and are disclosed to the other party.
A first instance court judgment is usually issued within about 18 months of the filing of the legal action, whereas a judgment by the appeal court is usually issued two years after the filing of the appeal. Courts will award legal costs only if the legal action contains a claim for damages; the costs may be about 3 or 4 per cent of the volume of the claim that has been judicially upheld and awarded. If the legal action is for a cease-and-desist order only, courts are not likely to award legal costs.
With respect to remedies in cases of infringement, Greece has fully implemented Directive 2004/48/EC on the enforcement of intellectual property rights. In cases of infringement of registered trademarks, or non-registered distinctive signs, the following remedies are available under national law.
- A cease-and-desist court order: establishing fault on the part of the defendant is not required for such an order. Such an order can also be granted under summary proceedings.
- Seizing or destroying infringing goods: the courts allow the claimant to seize and destroy infringing goods in the possession of either the infringer or third parties (who have not been parties to the legal proceedings), such as distributors or retailers. A court order allowing the claimant to seize infringing goods can also be obtained under summary proceedings.
- Damages: fault in the form of either negligence or intent must be established on the evidence. Pursuant to Article 13(1)(a) and (b) of Directive 2004/48/EC, courts may quantify damages on the basis of (1) the amount of royalties that would have been due if the infringer had requested a licence; (2) loss of profits suffered by the plaintiff; or (3) the profits made by the infringer. Plaintiffs usually prefer to request the amount of royalties that would have been due because it is easier to produce persuasive evidence on this ground, such as similar licensing agreements.
- Psychological (moral) damages: these are determined at the discretion of the court. Usually the court does not award psychological damages at all, and in cases of counterfeit goods, which are considered to be the most serious type of infringement, the amount of the award may be as low as €10,000, or even less.
- Legal interest: the rate is currently 7.25 per cent per annum and is estimated on the amount of the court award. Interest accrues from the date the legal action is served to the defendant.
- A court order obliging the defendant to disclose information regarding the names and details of distributors, manufacturers and suppliers of infringing goods, as well as information about the quantities of infringing goods that were manufactured, supplied or obtained and the relevant prices (see Article 8 of Directive 2004/48/EC).
- A public announcement about the judgment in the press at the expense of the defendant.
- A pecuniary penalty, which can amount to up to €10,000 if the defendant does not fully comply with the court judgment or a summary judgment.
- Imprisonment of the legal representatives of the defendant’s legal entity if the latter does not fully comply with the court judgment or a summary judgment.
- Legal costs, ranging from 3 to 4 per cent, roughly, on the volume of the damages and psychological damages award.
V OTHER ENFORCEMENT PROCEEDINGS
i Customs enforcement of intellectual property rights
Regulation (EU) No. 608/2013 regarding customs enforcement of intellectual property rights is directly applicable to Greek law and has proved to be particularly efficient in practice. The procedure established by the Regulation makes it possible to activate the customs service to watch for counterfeit goods passing through customs. A single application to the Central Customs Office at Piraeus simultaneously activates all local customs authorities in Greece. The application has to be accompanied by a notarised power of attorney appointing an attorney-at-law, or any other representative in Greece, as well as an agent to receive service of process. An application may also be filed with a customs office of any other EU Member State, and also designating Greece; in this case, the application is notified to Greek customs authorities, which are thus alerted to look out for counterfeit goods.
If the customs authorities trace goods that are believed to be counterfeit, they notify the local representative of the trademark owner, who is required to make a statement within 10 working days claiming whether the goods are indeed counterfeit; the statement must be made within three days in the case of foodstuffs and some other categories of goods. The representative is provided with a sample of the goods, and if a statement that they are counterfeit is filed, then the customs authorities seize the goods. The trademark owner who caused the arrest is required to file a legal action under ordinary proceedings within a period of 10 additional days. Usually, under these circumstances, the owner of the counterfeit goods settles the case out of court by agreeing to the destruction of the goods at their own expense. Otherwise, destruction of the goods is ordered by a court judgment.
The trademark owner has to bear all the customs authorities’ costs in relation to seizing and preserving the goods; these costs may vary from €500 to €1,000 for a period of about six months in ordinary cases, but costs really depend on the volume of the merchandise seized and on the period involved. There have been exceptional cases of very large quantities of counterfeit goods, where costs were as high as €20,000. The same procedure applies to goods infringing either trademark rights or any other intellectual property rights, such as patents, designs or even copyright. Greek customs authorities are likely to apply the same procedure in connection to goods in transit, which they have done occasionally in the past.
The procedure established by the Regulation does not apply to illegitimate parallel imports. This means that customs authorities will not agree to seize goods that have been stated by the trademark owner to be genuine goods, even if intellectual property rights have not been exhausted. However, should the trademark owner trace the infringing goods through the customs procedure, they can apply for a provisional court order to seize the goods. Therefore, the customs procedure can be of assistance even against parallel imports of genuine goods.
ii Domain names infringing earlier trademarks
Domain names infringing earlier trademarks or distinctive signs can be deactivated and deleted from the domain names registry through an administrative procedure initiated by an application to EETT. The applicant has to establish that the domain name was obtained in bad faith. Likelihood of confusion alone does not suffice. However, bad faith is likely to be established in cases where a domain name is very similar to an earlier trademark or distinctive sign with reputation. The process for deactivating and deleting a domain name obtained in bad faith is likely to last about 12 months. A decision by EETT can be appealed to the second instance administrative court, which will review the case on matters of law only; however, a decision made by EETT is enforceable, and filing an appeal against it does not affect its enforceability, unless the decision is reversed by the judgment of the court.
iii Criminal proceedings
Infringement of both registered trademarks and non-registered distinctive signs is a criminal offence. However, criminal proceedings are very slow, and the penalties are small and manageable. Moreover, criminal prosecution authorities usually do not have the means to seize large quantities of infringing goods. Hence, criminal proceedings are usually inefficient.
VI RECENT AND PENDING CASES
i Conflicts between trademarks and company or personal names
Conflicts between trademarks and company names are very common in Greek court practice, and have resulted in conflicting and sometimes controversial judgments. One of the most notable and recent cases involving conflicts between trademarks and personal names is the Panayiotis Nikas case. This case related to the use of personal names as trademarks and limitation of trademark rights. Mr Panayiotis Nikas was the founder and general manager of Nikas SA, a leading producer of sausages and cold meats. After a successful career at Nikas SA, Mr Nikas sold his shares to the company and was alienated from it. Ten years later, he started up another sausage and cold meats production company, using other trademarks. However, the advertising slogan he used on the product labels was: ‘With recipe and care by Panayiotis Nikas’. Nikas SA was the owner of a series of trademarks comprising the ‘Nikas’ word mark and alleged trademark infringement on the basis of likelihood of confusion and dilution. The First Instance Court of Athens21 found in favour of Panayiotis Nikas and held that Mr Nikas should not be prevented from using his own name in the context of the slogan ‘With recipe and care by Panayiotis Nikas’, so long as all other elements in the respective labels and packaging of the different products were dissimilar.
ii Lookalikes, product get-up and trade dress
‘Lookalike’ cases (also called ‘product get-up’ or ‘trade dress’ cases) are among the most difficult to argue in court. They relate to the protection of distinctive elements in a product’s overall appearance (such as the colour combinations, the packaging designs, or even the shape of the product or of its packaging) and are usually argued on the grounds of both trademark law and unfair competition. The ideal ground for such actions is trademark law, but invoking unfair competition is necessary if the overall appearance of the product, or some of its distinctive elements, are not covered by trademark registrations (i.e., when the packaging has not been registered as a trademark), or when the artistic elements of the packaging (i.e., colour combinations and designs) are not covered by copyright.
Some notable cases that describe the approach of the courts on the matter, and that took into accounts arguments on both likelihood of confusion and dilution, are described below.
This case relates to protection of a single colour, which was alleged to dominate the appearance of a product. ‘Petro gas’, a liquid gas for domestic use, was sold in blue cylinders. A new product, ‘Vitom gas’, used a closely similar shade of blue in its gas cylinders. The plaintiff’s legal action was rejected in both the first instance and the appeal court. The Supreme Court reasoned that the copying of colour should be assessed in the context of the doctrine of ‘overall impression’; in other words, the other figurative or word elements, as well as the overall packaging and appearance, should also be taken into account, to determine whether there is any likelihood of confusion or association, unfair resemblance or dilution. The Court, however, noted that, in principle, copying a single colour alone could suffice to establish likelihood of confusion if on the evidence it was found that this colour is the prevailing element of the packaging and appearance of the product and if it could be proved that copying this single colour alone could attract the attention of consumers.22
Sliced toast bread
This case concerns the colour combinations of the packaging of a product. The court found that one of the main elements copied by the defendant was the basic overall colour of the packaging, and that the basic overall colour was prevailing in the overall impression of the packaging. However, in this case, the defendant had also copied the colour combination, as well as other figurative and word elements used by the plaintiff, and this may reasonably have had an effect on the final ruling of the court.23
Camper Twins shoes
In this case, the court granted trade dress protection under unfair competition law to the red packaging and design of ‘Camper Twins’ shoes. The court emphasised that the red packaging of the shoes was characteristic for Camper Twins shoes and was therefore distinctive and protected. Another important point in this judgment is that the court found that the red Camper packaging had become distinctive as a result of intense advertising, although it circulated in the market for only a short period (two years). However, in this case, again, the defendant had copied the design of the shoes as well, and this may reasonably have had an effect on the court’s final judgment.24
Aspirin green packaging
Bayer has failed to obtain protection for the green-and-white colour combination of its ‘Aspirin’ packaging against a competing painkiller called ‘Salospir’, which was also sold in green and white packaging. The court found that the word marks (Aspirin and Salospir), as well as the company names of the manufacturers (Bayer and Uni-Pharma), rendered the different packages sufficiently dissimilar and prevented likelihood of confusion. Most importantly, the court held that the green colour was not distinctive, as it was associated in the minds of consumers with the idea of relief from pain. Indeed, the novelty of this judgment was that it accepted the marketing doctrine that certain colours, when used in connection with certain products, cause specific psychological emotions and mental associations for consumers. It is a well-established principle in the sciences of both marketing and psychology that the colour green is mentally and psychologically associated with calmness, relief from pain and with healing diseases.25 In this case, the defendant, Uni-Pharma, was not a newcomer but a leading local pharmaceutical company and Salospir had been traded as a word mark for about 40 years in the local market and enjoyed a high market share.
iii Parallel imports and exhaustion of rights
Following EU law (Article 7 of Directive 2008/95/EC) and the jurisprudence of the CJEU on the matter, Greek law and court practice is particularly supportive of trademark owners on the issue of exhaustion of rights and parallel imports. Trademark rights are exhausted only if the trademark owners themselves, or a party acting with their consent, have put the specific goods (i.e., those that have been imported into Greece) on the market in an EU or European Economic Area (EEA) country. Consent is not assumed, but must be established on the facts.26 The burden of proof is on the parallel importer.27 As a result, parallel imports from non-EEA countries are in principle prohibited and amount to trademark infringement, while parallel imports from EEA countries are in principle allowed, provided that it can be established that the goods were put on the market by the trademark owner or with their consent. Good faith of the parallel importer is irrelevant.
The rulings of Greek courts have been more favourable to trademark owners, as they have found on certain occasions that trademark owners had legitimate reasons to oppose the commercialisation in Greece of goods imported from other EU countries (i.e., goods whose trademark rights should have been exhausted).28 The grounds justifying the objection of the trademark owners for further commercialisation was that the goods destined for Greece were manufactured under different quality standards from those traded in other EU countries. For example, the court prevented further commercialisation in Greece of Kodak negative photographic films, which had been imported from other EU countries, on the ground that, as far as the manufacturer was concerned, those films were not destined for Greece, where light is more intense, and hence their use in Greece would not have acceptable results.29 Another characteristic example is Nescafé’s instant coffee powder. Courts have prevented parallel imports of genuine Nescafé tins from north European EU countries, on the ground that Nescafé is made differently for Greece, so that it produces more foam and can be prepared as a cold drink, whereas the product manufactured for countries in northern Europe is made for consumption as a hot drink only.30
Preference is also shown to trademark owners in that Greek courts usually find that even in cases of legitimate parallel imports, a parallel importer is not allowed to use the trademark for advertising purposes. In some cases, it has also been argued that use of the trademark by the parallel importer for advertising purposes creates the false impression that the parallel importer is part of the trademark owner’s distribution network (i.e., the parallel importer is an authorised dealer).31 These cases, however, greatly depend on the facts and the particular circumstances (i.e., the nature of the use made of the trademark by the parallel importer). In addition, these cases have been heavily criticised in legal literature and may no longer represent a valid precedent.
The approach of the CJEU on this issue is that the type of advertising and the standards of advertising set by the parallel importer should not impair the image of the trademark and should be similar to those set by the trademark owners themselves.
The most notable future development expected in Greek trademark law is the implementation of Directive (EU) 2015/2436. The implementation should have taken place by 14 January 2019, but Greece is late in this process. The new Greek law on trademarks implementing the Directive is likely to come into force at the end of October 2019.
1 Christos Chrissanthis and Xenia Chardalia are partners and Antonia Vasilogamvrou is an associate at Christos Chrissanthis & Partners.
2 Council of State, No. 2944/2008.
3 Council of State, No. 620/1982.
4 Second Instance Administrative Court of Appeal of Athens, No. 97/2013.
5 Council of State, No. 535/1981.
6 Council of State, No. 1964/1980.
7 Council of State, No. 189/1985.
8 Council of State, No. 1610/2017.
9 Council of State, No. 1710/2006.
10 Single-Member First Instance Court of Athens (Summary Judgment), No. 5632/2004.
11 Supreme Court, No. 1030/2008.
12 Athens Court of Appeal, No. 840/2012; from the judgment it seems that the level of similarity between the different marks was strong enough to also establish likelihood of confusion.
13 Multi-Member First Instance Court of Athens, No. 5610/2010.
14 Single Member First Instance Court of Athens (Summary Judgment), No. 9476/2012.
15 Athens Court of Appeal, No. 3945/2012.
16 Council of State, No. 3617/2006.
17 Trademark Committee, Decision No. 2481/2008.
18 First Instance Administrative Court of Athens, No. 383/2016.
19 Council of State, No. 1240/2008.
20 Second Instance Administrative Court of Appeal in Athens, No. 2505/2008.
21 Multi-Member First Instance Court of Athens, No. 5246/2014.
22 Supreme Court, No. AP 399/1989.
23 Single-Member First Instance Court of Athens, No. 1265/2005.
24 Multi-Member First Instance Court of Athens, No. 6778/2004.
25 Athens Court of Appeal, No. 1702/2016; the same case was similarly decided before the European Union Intellectual Property Office in the context of opposition proceedings (Case R-2444/2015-4).
26 Athens Court of Appeal, Nos. 6414/1996, 4530/2002, 4723/2010 and 4304/2012; Thessaloniki Court of Appeal, No. 855/2012.
27 Multi-Member First Instance Court of Piraeus, No. 1735/2012.
28 See Article 7(2) of Directive 2008/95/EC.
29 Single-Member First Instance Court of Chania, No. 2410/2003.
30 Single-Member First Instance Court of Thessaloniki, No. 8031/2005 and Multi-Member First Instance Court of Piraeus, No. 1735/2012.
31 Athens Court of Appeal, Nos. 6414/1996 and 4723/2010; Piraeus Court of Appeal, No. 172/1996.