The Trademarks Law Review: Greece
The new Greek trademark registration and enforcement landscape, introduced after the enactment of the Trademarks Law No. 4679/2020, is described in this chapter. After brief reference to the legal framework for the protection of trademarks and other similar intellectual property rights, aspects of registrability, prior rights and inter partes proceedings such as opposition, invalidity and revocation actions are approached. Civil proceedings against infringements of trademarks, unfair competition and disputes regarding company names, trade names and domain names are presented regarding pre-trial, main hearing and alternative handling of cases. Lastly, representative case law illustrates these areas of law.
- Trademarks Law 4679/2020 (Official Gazette A71/20 March 2020). Reference to number of an Article is henceforth meant to be of Law 4679/2020;
- EU Directive 2015/2436 for the harmonisation of national trademarks law;
- EU Directive 2004/48 for the enforcement of IP rights;
- Being a member of the EU, Greece is part of the European Union Trademark system (Regulation 2017/1001). The EUIPO Trademark Guidelines affect considerably the practice of the Administrative Trademarks Committee (ATC) and the courts;
- Paris Convention (1883) – Ratification Law 213/1975;
- TRIPS Agreement (1993) – Ratification Law 2290/1995;
- the Nice Agreement for Classification of Goods and Services (11th version) – Ratification Law 2505/1997; and
- the Unfair Competition Law 146/1994 as currently in force.
- Article 20(3) now officially distinguishes between the different tasks undertaken by the officers of the Greek Trademarks Office (GTO), by explicitly referring to:
- 'controllers', who examine whether a new trademark application fulfils the formal requirements;
- 'researchers', who perform a search for earlier possibly conflicting trademarks and send relevant notifications to the holders of earlier rights;
- 'examiners', who examine new trademark applications as to absolute grounds of refusal); and
- 'registrants', who confirm whether formal requirements for registration are met and record the registration);
- the General Commercial Register (ΓΕΜΗ) and Chambers of Commerce as one-stop-shop service providers for company names;
- the National Telecommunications and Post Services Committee (ΕΕΤΤ) for domain names; and
- the Council for the Supervision of Advertising Practices (ΣΕΕ) for illicit advertising.
iii Substantive law
- Law 4679/2020 for registered trademarks, including well-known marks;
- Law 146/1914 for unregistered marks, company names, trade names or business names;
- Law 146/1914 against Unfair Competition Law 4679/2020 and EU Regulations (EC) 110/2008, (EU) 1151/2012, (EU) 1308/2013, (EU) 251/2014 and Article 4 of Law 4679/2020 for geographical indications. There are also laws on specific branches of products, for example, Law 2040/1992 for olive oil, PD 81/1993 for agricultural products, among others; and
- Decision No. 843/2/1.3.2018 of National Telecommunications and Post Services Committee (domains) (ΕΕΤΤ) for domain names.
Registration of marks
i Inherent registrability
New trademark definition – practical impact on Greek trademarks and international registrations
Graphical representation as element of trademark's definition is abolished. Also new forms of trademarks, the 'non-traditional marks' (i.e., 3-D marks, position, pattern, motion, audiovisual and hologram marks), are introduced.
Trademarks shall be represented in the Registry in any appropriate form, in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner so as to enable trademark offices (TMOs), the courts and the public to determine with clarity and precision the scope of protection afforded to their proprietor. These provisions are applicable both for Greek trademark registrations and for the international petitions, which are based on Greek trademark applications as well as for international trademark registrations designating Greece. Nevertheless, for the time being, while the World Intellectual Property Organization (WIPO) accepts non-traditional trademarks as basic registrations, it requires that these be graphically represented in the national Trademarks Registry. Thus, if a Greek sound mark is represented in the form of a sound recording (MP3, MP4), then it may not be accepted by WIPO.
Goods and services classification with analytical reference to goods and services
Goods and services for which protection is sought should be identified with sufficient clarity and precision to enable the competent authorities and economic operators to determine the scope of protection of a mark. Use of such general terms shall be interpreted as including resp. protecting all the goods or services covered only by the literal meaning of the indication or term and not as comprising a claim to goods and services, which cannot be so understood. This applies also to marks registered prior to the new law. Nevertheless, for older marks that are registered with respect to the entire heading of a Nice Classification, no provision is foreseen that corresponds to that adopted by Article 33(8) of Regulation 2017/1001 (i.e., a declaration for protection request beyond the literal meaning of Class Heading to be filed within a term). Proprietors of these Greek trademarks are generally recommended to examine whether or not goods and services for which their mark is actually used are included in the literal meaning of said Nice Classification headings. In the negative case, it is advisable for better protection that relevant petitions specifying such goods and services be filed.
Absolute grounds for refusal
A trademark shall not be registered or, if registered shall be liable to invalidation if it cannot constitute a trademark in the meaning of law or is devoid of any distinctive character or consists exclusively of signs designating the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of goods and services, or consist exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade. Unlike Article 4(5) of the EU Directive 2015/2436, the new Law provides that acquired distinctiveness through use must be proven to exist until the date of filing of an application and not after the filing date. This provision, though, disregards the fact that trademark registration process is sometimes quite lengthy to be completed. Prevalence in the course of trade within the Greek territory is required. According to CJEU case law, in determining whether a mark has acquired distinctive character because of the use made of it, an overall assessment of the evidence is required concerning the trademark's function as source indicator. Such evidence may include market share, promotional expenses, market awareness and opinion polls.
The shape of goods may also constitute an absolute ground for refusal if a sign filed as a trademark is comprised exclusively thereof. The innovation of this provision is that it does not refer only to the shape but also to a possible other characteristic of the good.
An example of a trademark's 'other characteristic' might be a sound mark representing the sound of a motorbike and distinguishing motorbikes if the sound results from the nature of the goods (in the sense of technical performance) or an olfactory mark of a scent for a perfume. Furthermore, signs which may mislead the public for instance, as to the nature, quality or geographical origin of the goods or services, contravene public policy or accepted principles of morality as well as Article 6 ter of the Paris Convention, those who have great symbolic importance (especially religious symbols, representations and words) or those that have been filed in bad faith, shall also not be registered as trademarks.
Absolute grounds for refusal are also Protected Geographical Indications (PGI), Protected Designations of Origin (PDO) and Plant Variety Rights.
At the stage of the filing of the trademark application, absolute grounds for refusal are assessed ex officio. After the publication of a trademark, they may be raised through an opposition. Legal interest does not have to be proven. Furthermore, cancellation of a registered mark can be requested on absolute grounds.
ii Prior rights
The ex officio examination as to relative grounds of refusal is abolished with the aim to expedite the registration process.
However, the TMO would still undertake an anteriority search in order to notify the holders of earlier conflicting trademarks. This type of search would not extend to other earlier rights (such as company names, domain names, among others).
Thus, it is highly recommended that the applicants perform an availability search before filing their mark and the proprietors monitor their earlier rights against confusingly similar new trademark applications for opposition purposes.
A sign would not be registered or may be subject to invalidity when it conflicts with earlier rights. The latter may be a Greek national trademark, a European Union trademark (EUTM)or an international registration (IR) designating Greece, well-known trademarks in the sense of Article 6 bis of the Paris Convention as well as trademarks registered and used abroad (under certain circumstances – trademark filed in bad faith).
The earlier rights may also be to non-registered trademarks and other signs used in the course of trade (such as company names, distinctive titles, copyright or the right to personality such as an artist's name), protected designations of origin (PDOs) and geographical indications (PGIs).
Relative grounds of refusal or invalidity constitute also the unauthorised filings by an agent or representative of the trademark owner. Such bad faith trademark filing presupposes lack of knowledge from the part of the real trademark owner.
Prerequisites for protecting earlier rights and refusing a trademark application or declaring a registered trademark invalid
These prerequisites are the following:
- earlier rights predate the filing of the contested trademark application or registration; and
- there is a 'likelihood of confusion' (including the likelihood of association) for the part of the relevant public. This is the issue of whether the public might believe that the goods and services in question come from the same undertaking or from economically linked undertakings. In the assessment of likelihood of confusion the basic parameters of identity or the 'degree of similarity between the signs', the identity or the 'degree of similarity between the goods or services' involved and the 'distinctiveness of the earlier mark' are taken into account. Other factors, such as the 'relevant public', its 'sophistication' and the 'degree of attention' it normally displays would also affect the assessment of the likelihood of confusion.
Likelihood of confusion is not a prerequisite:
- when a 'double identity' (identity of the compared signs and the goods or services concerned) exists; and
- when the earlier right refers to a 'reputed' trademark. In the latter case, protection is granted if there is an identity or similarity between the signs in question, so that a link between the later and the earlier mark is created in the mind of the relevant consuming public and 'the use of the later sign without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark (free-riding; dilution)'.
In connection with the concept of reputation, it is not required anymore to prove the uniqueness of the mark and the imaginative character thereof. A trademark can be reputed when it is known by a significant part of the relevant public in Greece (or EU where a EUTM is involved). Proof related to long-standing and widespread use of the mark, high market share and extensive advertising of the goods bearing the mark as well as market surveys about the degree of market awareness are important means of evidence to that effect.
iii Inter partes proceedings
Relative grounds of refusal or invalidity – procedural aspects
Relative grounds of refusal or invalidity may be raised by third parties (not ex officio), before registration, by means of an opposition or, after registration, either by an application for declaration of invalidity of the contested mark or by a counterclaim brought about by the defendant in an infringement action for declaring the plaintiff's mark invalid.
The opposition and the application for a declaration of invalidity are filed before the Administrative Trademarks Committee (ATC). Appeals relating to opposition proceedings are addressed to ordinary administrative courts, whereas appeals relating to invalidity (and revocation) proceedings although filed before the ATC are now addressed to civil courts.
- The opposition is filed and examined before the ATC. Legal means against the latter's decision are filed before the ordinary administrative courts.
- The opposition is filed within three months starting from the day following the date of digital publication of the examiner's or the court's decision accepting the challenged trademark application.
- Both absolute and relative grounds of refusal may be raised.
An opposition on absolute grounds of refusal may be filed by any natural or legal person, including associations of manufacturers, producers, service providers, traders and consumers or bodies that represent such associations.
Relative grounds of refusal are only raised by earlier right holders and the duly authorised users of earlier trademarks.
Requirement as to proof of use of the earlier mark
When at the date of filing of the opposed trademark application the earlier trademark (legal basis of the opposition) has been registered for at least five years and if the applicant so requests, the opposing party has to provide proof that his or her mark has been put in genuine use in the territory where it is protected during the five-year period preceding the date of filing of the opposed application or that there are proper reasons for non-use. Failure to meet the above requirement leads to the rejection of the opposition, without being examined on the merits.
The new law enables the parties in opposition proceedings to jointly request before the ATC a time period of at least two months to explore possible extrajudicial settlement (analogous to the cooling-off period provided by the EUTMR).
Application for a declaration of invalidity
- This type of application is filed before the ATC. Legal means against the ATC's decision are adjudicated by the civil courts.
- The application for invalidity can be filed at any time after the registration of the mark. However, in the case where the proprietor of an earlier trademark has acquiesced, for a period of five successive years, in the use of a later registered trademark (remained inactive against the use or registration of that mark) while being aware of such use (real knowledge is required; presumed knowledge may suffice when undoubtedly proven), that proprietor shall no longer be entitled to apply for a declaration that the later trademark is invalid, unless the later trademark was filed in bad faith (acquiescence).
- An application for invalidity may be filed on both absolute and relative grounds of refusal.
- Although Article 52 does not specifically refer to the entitlement of the users of earlier trademarks to file an application for declaration of invalidity, a duly authorised user (Article 17, paragraph 4) should also be able to file such legal means.
- If the other party in the proceedings so requests, the applicant for the invalidity is required to prove genuine use of his or her earlier trademark or that there are proper reasons on non-use in two separate time periods (i.e., within the five-year period preceding the filing of the application for invalidity (provided that his or her mark has been registered for at least five years at that time) and within the five-year period preceding the filing of the contested trademark registration (when at that time his or her mark has been registered for more than five years). In absence of adequate proof of use (or of proper reasons of non-use), the application for invalidity is rejected (no examination on the merits).
Greek trademark law does not provide for any use or intent to use requirements for filing, registering or renewing a trademark application or registration.
Proof of use is required for pursuing the refusal or invalidity of a later trademark and prohibiting the use thereof. The earlier trademark owner, if the other party so requests, is required to prove genuine use of his or her earlier trademark in the frame of opposition and invalidity proceedings.
The defendant in infringement proceedings is entitled to request that the plaintiff proves that the earlier trademark has been put to genuine use or that there are proper reasons for non-use during the five-year period preceding the filing of the civil actionor the petition of interlocutory injunction. Failure to comply with the above requests leads to the rejection of the legal means filed.
Non-use of a registered trademark renders it vulnerable to a revocation action (see below).
Application for revocation (Article 50) – counterclaim for revocation (Article 38 paragraph 12 et seq.)
An application for revocation is filed before ATC. The ATC's decision can be contested before the civil courts.
When infringement proceedings have already been initiated, revocation may be pursued through a counterclaim (a separate civil action) filed by the defendant in parallel to the infringement proceeding case (see Section III.iii, 'Use requirements').
The new law lays down the absence of genuine use and the trademark having become generic or a misleading indication as grounds for revocation. In particular:
- a trademark shall be liable to revocation if, within a five-year period as of its registration, it has not been put to genuine use in Greece in connection with the goods or services in respect of which it is registered or if, within a continuous five-year period, it has not been put to use, and there are no proper reasons for non-use. Real and effective use is proven through evidence concerning the place (Greece or part thereof), time (as above), extent (volume of the acts of use, duration and frequency thereof are important to that effect) and nature of use (public and external use to guarantee the origin of the goods which aims at creating an outlet for those goods would protect a trademark registration from a revocation action);
- a trademark shall also be liable to revocation if, after registration, it has become commonplace due to acts or inactivity of the proprietor; and
- as a result of the use made of, it is liable to mislead the public, as to the nature, quality or geographical origin of the goods and services.
The trademark holder bears the burden of proving the use of his or her mark.
The new law foresees, for the first time, mediation proceedings in disputes pending before the ATC at any time after the filing of an opposition, petition for revocation or invalidation and intervention. The petition for mediation causes suspension of the deadlines.
Previously civil courts were bound by the final decisions of the ATC and the administrative courts. With the new Law, there is partial transfer of authority from the administrative to the civil courts.
In civil action proceedings for trademark infringement, the defendant may now file a counteraction for the revocation or invalidation of any mark which is the legal basis of the civil action. Until now, the civil courts could examine such a case only with respect to EU trademarks for which Regulation 2017/1001 applied. The legislative goal is the avoidance of conflicting decisions on the same case.
It is also foreseen that petitions for revocation or invalidation of a mark are examined at the first instance by the ATC, for their speedy resolution. However, the ATC's decision can be challenged before civil courts and not in administrative ones. The ATC's decisions are examined formally and substantively by the civil courts, although the ATC is an administrative law body operating within the frame of the TMO.
The ATC has jurisdiction over the acceptance and rejection of trademark applications; over the examination of oppositions and recourses against decisions of the Examiner; over petitions for revocation or invalidation, intervention and conflicts which arise between the TMO and the applicants.
However, the constitutionality of tha partial transfer of competence from administrative courts to the civil ones has been put in doubt since it introduces an unjustified exception to the established principle of distinction between the competence of administrative and civil judicial bodies.
v Elimination of fees for change recordals and restriction of goods and services
Another important change is the elimination of official fees for recordals of change of owner's name, legal seat, address and legal form. These updates in the Registry are a matter of public interest.
There is a slight increase in the trademark filing fee (€120 for the first class, up from €110) and the renewal fee (€110 for the first class, increased from €90). Nevertheless, reduced official filing fees are due (€100 for the first class) and official renewal fees (€90 for the first class) if the relevant petitions are filed electronically.
vi Guarantee or certification marks
Guarantee or certification marks is a novum of the new law concerning the quality of goods.
vii Term and renewal of trademarks
The 10-year protection term for Greek trademarks begins from the filing date of the application and not on the day following the filing as was the previous law.
Renewal is possible within the last six months (not 12 months) before the expiration of a mark.
Late renewal within the six months' grace period is possible subject to a 50 per cent fine on the official fee. However, caution is required because renewal within the grace period does not overturn third parties' rights possibly acquired in the meantime. This new provision though seems to be legally questionable since renewal within the grace period is granted while protection against third parties within the same period is denied.
The competence of civil courts of first and second instance to adjudicate trademark matters is significantly broadened. The national courts for infringements concerning European trademarks are those of Athens and Thessaloniki (first and second instance).
ii Pre-action conduct
It is often possible to settle conflicts between earlier and later trademarks through negotiations that may lead to either withdrawal of a mark or limitation of the list of goods and services. A warning letter is also a useful alternative.
iii Causes of action
Rights conferred by a trademark
Registration of a mark entitles the proprietor to affix the mark on the products, their packaging, on invoices and price-lists, to use the same in advertising, in social media, et al.
Prohibited acts constituting an infringement are indicatively enumerated in the law. Unauthorised use of a trademark as a trade or company name or part thereof, its use on business papers and in advertising, including social media and in comparative advertising were added to the new law as infringing acts. Furthermore, enforcement of trademark rights is strengthened against infringing goods coming from third countries that are being brought in the course of trade in Greece without being released for free circulation here, regardless of any custom situation (transit, transshipment, warehousing, etc.).
The proprietor may prohibit 'preparatory acts' concerning use of packaging or other means, the 'reproduction of the trademark in dictionaries' as well as contest the registration and use of the 'trademark' when 'registered in the name of an agent or representative' of the real owner.
Consequently, the protection reserved to the registered trademark is now readily enhanced.
Limitation of the effects of a trademark
- A trademark shall not entitle the proprietor to prohibit a natural person (not a legal entity though) from using in the course of trade his or her name, which happens to be identical to the earlier mark.
- A third party shall not be prohibited from using in the course of trade signs or indications which are not distinctive. The new law broadens said limitation owing to the lack of reference to criteria, such as the kind, quality, intended purpose, of goods and services. There may now be room for such limitation to be invoked against signs that, although are devoid of distinctive character, have been granted trademark registration (and they have not meanwhile acquired distinctive character through use).
The limitations under points (a) and (b), above, shall reasonably apply where a third party acts in accordance with honest practices.
- Intervening rights are an exception to the principle of priority. The owner of an earlier trademark shall not succeed in invalidity or infringement proceedings against a posterior registered mark, if the latter has been obtained at a time when the earlier trademark was liable to be declared invalid or be revoked (e.g., because at that time had not acquired distinctive character due to its use), or if the earlier trademark could not challenge the posterior mark because the necessary conditions were not then applicable (e.g., no enhanced distinctiveness or reputation of the earlier mark had been acquired at that time to permit protection in terms of likelihood of confusion or dilution respectively).
In such cases, the marks in conflict are led to co-existence, since neither the proprietor of the later trademark would be entitled to challenge the use of the earlier trademark.
- 'Preclusion of a declaration of invalidity' and 'prohibition of use of a later trademark due to acquiescence' may also be regarded as means of limitation of the effects of a trademark. The counterargument of acquiescence (the proprietor of the earlier trademark remained inactive against the use of a later registered trademark for a period of more than five years) may be put forward not only in invalidity proceedings but in infringement proceedings as well and preclude – if being successful – the grant of protection to the earlier trademark against the registration and use of a later trademark.
- Exhaustion of the plaintiff's right on an earlier trademark.
iv Conduct of proceedings
Infringement proceedings include the initial civil action writ, the deployment of plaintiff's arguments, the defendant's arguments and any supplementary writs by both parties commenting on the opposite party's arguments and submitted evidence. Sworn declarations, public or private documents such as contracts, invoices, promotional material, ads in paper or electronic form may be presented to the court. It remains at the discretion of the court to invite one or more witnesses for oral examination if it is deemed necessary.
Taking into account the negative powers of a trademark proprietor and the limitations of trademark protection, one could summarise the main defences available according to the law, to a person or entity sued for alleged infringement as follows:
- non-use of the plaintiff's trademark or other sign in the course of trade; that is to say, not as a source indicator for the distinguished goods and services (e.g., in the frame of a scientific research, parody or in a cultural performance);
- use requirement concerning the plaintiff's prior mark or other right (see Section III.iii);
- claiming lack of risk of confusion including risk of association with respect to the earlier mark or lack of fame of the plaintiff's mark;
- use of own earlier right by the defendant (principle of priority);
- counterclaim for invalidity or revocation of the plaintiff's mark (Article 38, paragraph 12 et seq.). To this end, a separate civil action in the sense of counterclaim by the defendant in parallel to the infringement action is required. It is noted that a counterclaim for invalidity or revocation may also be filed in defence against a petition for interlocutory injunction. However, the trademark would not be declared invalid or be revoked by virtue of such decision;
- exhaustion of plaintiff's rights;
- loss of plaintiff's trademark protection owing to acquiescence with respect to the defendant's posterior registered trademark;
- intervening rights (see Section IV.iii); and
- abusive exercise of trademark's negative powers according to general civil law principle (Article 281,CC).
Apart from withdrawal of infringing goods, removal of infringing sign and destruction of said goods, noteworthy changes are:
- wilful misconduct is required for the court to order a fine for moral damages. A simple misconduct (mere fault) is not sufficient;
- if the court issues a desist order, the maximum amount of pecuniary penalty that can be imposed is up to €100,000 in favour of the claimant (as opposed to €10,000 under the previous law) and up to one-year imprisonment of the infringer. The same remedy is available in a granted interlocutory injunction; and
- civil or penal courts decisions regarding trademark infringement may, at the expense of the infringer, order appropriate measures for the dissemination of the information concerning the decision, incl. the uploading of the decision online and the entire or partial publication thereof in mass media and social media.
Other enforcement proceedings
In respect of goods subject to customs supervision or customs control, which are suspected of infringing an intellectual property right, EU Regulations No. 1352/2013 (as amended by Regulation 2020/1209) and 608/2013 provide for customs detention of potentially infringing goods. EU Regulation No. 608/2013 has proven to be a useful tool against counterfeits, if the applicant is a holder of an EU IP right, such as an EUTM, an RCD, a PDO or a PGI.
According to the new law, owners of Greek trademarks are entitled to prevent all third parties from bringing goods in the course of trade in Greece, where such goods come from non-EU countries and bear without authorisation a trade mark that is identical to a prior trade mark registered in respect of such goods, or which cannot be distinguished in its essential elements from said trademark. Such right though shall not apply if the holder of goods proves that the proprietor of the registered trademark is not entitled to prohibit the placing of the goods in the Greek territory.
Recent and pending cases
i ΧΩΡΙΟ-HORIO case
In this trademark infringement case, the plaintiff Minerva SA Edible Oils & Food Enterprises, owner of a Greek trademark series consisting of or including the word 'ΧΩΡΙΟ' (meaning village) (Class 29, 30), requested the ceasing of use of the indications ΧΩΡΙΟ-HORIO by the defendants, owners of the Greek trademarks 'Lyrakis FAMILY mild 0.3 Cretan Village' (in English) and 'Λυράκη ΟΙΚΟΓΕΝΕΙΑ ελαφρύ 0.3 Κρητικό Χωρίο' (in Greek), which are used to distinguish olive oil. The court found that the olive oil under the plaintiff's trademark 'ΧΩΡΙΟ' has prevailed in the course of trade. The court ordered the defendant to cease using the indications ΧΩΡΙΟ-HORIO either alone or in combination with other indications to distinguish olive oil and any other types of oils and edible fats.
ii EVOLTRA v. EVOLVA pharmaceuticals case
The opposing party requested the rejection of Greek trademark application (Class 5) because of its similarity with its prior EUTM 'EVOLTRA' (word) (Class 5). The ATC found that the two marks are similar. The second word 'pharmaceuticals' of the contested application is descriptive and as such is lacking distinctive power and must be rejected.
iii Medap v. medac case
This opposition concerned the comparison of the Greek Trademark Application (Classes 5, 9, 10, 16, 35, 37, 38, 42 and 44) with the earlier EUTM (word) 'medac' (Classes 3, 5, 10). The two marks and the goods and services distinguished by them were found by the ATC to be confusingly similar. The figurative component of the Greek mark is insufficient to establish any sufficient differentiation between them.
iv MAMMUT v. MAMMUTH case
In this invalidity case, the petitioner holder of IRs and MAMMUT (word) (Class 25) both designating Greece, filed a petition for declaration of invalidity against the Greek Trademark (Class 25). According to the ATC's decision, the compared marks are confusingly similar both with respect to their word elements as well as their figurative elements. The contested trademark was cancelled.
v Ikea v. Ikeapharm case
The defendant registered and used the domain names 'ikeapharm.gr' and 'ikeapharm.com', through which he was selling pharmaceutical products and cosmetics (online pharmacy shop). The plaintiff, the holder of the famous trademark and distinctive sign IKEA, filed a civil action requesting the ceasing and desisting of the use of its famous sign and mark. The court held that the registration and use of the defendant's domain names infringes the famous distinctive signs of the plaintiff (trademark series, company name, trade name, domain name, all consisting of or including the indication IKEA). The defendants were ordered to cease use of the contested domain names and to transfer their ownership to the plaintiffs.
vi Alibaba case decision
This infringement case was about the comparison between the defendant's domain name 'alibaba.info' and the prior and famous trademark, distinctive sign (as domain name, company name, trade name) 'Alibaba' of the plaintiff. According to the civil court, the compared signs are highly similar. The defendant was ordered to cease using the contested domain name in both Greece and the EU.
vii ΣΚΑΙ v. SKY case
The plaintiff, owner of the EU trademark series 'SKY', operates since 1989, the largest television network of the UK. The defendants have been using the mark 'ΣΚΑΙ'/'SKAI' since 1989 in Greece as a distinctive sign of their radio and television station, as company name, trade name and domain name. The mark 'ΣΚΑΙ' is widely known by the Greek consumer public. The free of charge services provided by the plaintiff are only accessible by the English consumers. The two signs, SKY and ΣΚΑΙ/ SKAI, are dissimilar so as to cause confusion to the public. both from the optical and acoustical impression that they create. The word ΣΚΑΙ/SKAI is meaningless in Greek.
viii Olympic Games 2004 case
According to Greek Law 2598/1998, terms related to the term Ολυμπιακοί Αγώνες 2004 (Olympic Games 2004), which have been de jure as trademarks, without any prior examination of their registrability, are protected in favour of the Organizing Committee of Olympic Games – Athens 2004.
In this infringement case, the defendant registered and was using the domain name www.olympicgames2004.gr. The court ruled that the latter infringes the committee's rights on the above terms, according to the provisions of Trademark Law and Unfair Competition Law. The defendant was ordered to cease and desist using the contested domain name as well as any other term that is linked to the Olympic Games.
E-procedures before TMOs are recognised tools of service improvement. However, the prima facie reasonable limitation of trademarks' negative powers may, under some circumstances, distort competition. Furthermore, partial transfer of judicial competence from the administrative to the civil courts in regard to appeals against ATC's decisions on revocation and invalidity petitions may be challenged in the future on grounds of unconstitutionality causing legal uncertainty, as the minority of the Full Bench of the Supreme Administrative Court held. Finally, augmented e-infringements in the digital world challenge e-commerce activities especially in times of economic crisis or public health restrictions. Generally, the new law is considered to be a successful step toward better trademark protection. New case law though will hopefully provide any pending answers.