Implementation of the New Trademark Law in Greece - International Trademark Association

The authors served on the Trademark Office Practices Committee, European National Trademark Offices Subcommittee in the 2018-2019 term.

Vali Sakellarides, Sakellarides Law Offices, Athens, Greece
INTA Bulletins—Europe Subcommittee
Michalis Kosmopoulos, Drakopoulos, Athens, Greece
Marina Perraki, Tsibanoulis & Partners, Athens, Greece
International Amicus Committee—Europe Subcommittee
Stefanos Tsimikalis, Tsimikalis Kalonarou Law Firm, Athens, Greece
Enforcement Committee
Nikolas Lyberis, Vayanos Kostopoulos Law Firm, Athens, Greece
Non-Traditional Marks—Europe and Central Asia Subcommittee
Verifier: Marinos Cleanthous, Ioannides, Cleanthous & Co LLC, Nicosia, Cyprus

New Trademark Law 4679/2020 in Greece entered into force on March 20, 2020. The new law is primarily in line with implementation proposals INTA had submitted during the consultation and safeguards the uniformity of the European Union member states’ framework in relation to protection of trademarks.

With the new law, Greek lawmakers’ main intention was to transpose EU legislation and contribute to the international uniformity in trademark law in all possible ways. It implements the Directive (EU) 2015/2436 to approximate the laws of the member states relating to trademarks and the Directive 2004/48/EC on the enforcement of intellectual property rights. Certain provisions are retroactive to January 14, 2019. The new law consists of 90 articles and replaces the previous and short-lived Trademark Law 4072/2012. Although Directive 2004/48/EC had already been implemented in previous Trademark Law 4072/2012, the new law revises certain aspects of the trademark enforcement system.

INTA, through the Trademark Office Practices Committee, European National Trademark Offices Subcommittee, submitted comments on the proposed legislation in February 2019. The Greek Parliament expected to vote on the final draft of the law during 2019. However, due to the general elections in July 2019, the vote was delayed until March 20, 2020.

The following major changes introduced by the new law will have the most impact on everyday practice:

The definition of a trademark is changed to correspond with the definition in the Directive. New non-traditional types of marks with no graphical representation are added, provided they are distinctive. The introduction of new forms of trademarks (3D, holograms, and sound) is a positive step toward better protection of innovative commercial practices. But the infrastructure which must be used remains to be clarified through implementing provisions, as well as under which guidelines the examiners may examine the new forms or trademarks. Currently no official registry for 3D objects exists and 3D trademarks can only be filed as an image. The adjudication of these new forms before the Administrative Trademarks Committee and the competent courts is also a matter to consider. Similarly, the Greek Trademark Office (GTMO) will have to adapt its practice for sound marks and their reproduction before the GTMO and the courts.
The rules set by the EU Intellectual Property Office regarding distinctiveness are strictly adhered to; the goods and services must be specific and detailed.
Certification marks are now available.
The examination of the relative grounds for refusal by GTMO examiners has been abolished. This will accelerate the registration procedure. However, this legislative novelty can only be implemented if and when two basic conditions are met, namely: (1) the reliability of the data made available by the GTMO is improved so that they are complete and accurate and updated regularly; and (2) the official e-Register of the GTMO is completed and commissioned.
Under the new framework, the GTMO will send search reports to holders of prior trademarks that could have an interest in opposing a new trademark application. New staff members, or “researchers,” will identify prior rights and notify the parties. Considering this change, earlier rights holders should be more proactive in watching trademarks that are accepted for registration and published by the GTMO in order to ensure that oppositions are filed on time.
Limitation of the protection of unused trademarks by the Proof of Use request is available in all possible proceedings.

With respect to the enforcement proceedings, the following points are noted:

For the first time, civil courts acquire jurisdiction in examining the validity of national trademarks. Defendants in trademark infringement proceedings that are brought before the civil courts now have two new defenses: (1) the counterclaim for revocation or invalidity; and (2) the objection of non-use of the earlier mark(s) that form the basis of the claim.

Under prior Trademark Law 4072/20212, a counterclaim for revocation or invalidity was available in proceedings that involved EU trademarks; however, it did not apply to national trademarks. Under new Trademark Law 4679/2020, such a counterclaim can also be brought against national trademarks, providing explicitly that such action can only be raised as a counterclaim and not as an independent action. Further, for the counterclaim to be admissible in civil court, the defendant must notify the GTMO of the fact by the date of the court hearing.

Meanwhile, once the infringement action has been filed by the plaintiff, the defendant can no longer challenge the validity of the plaintiff’s trademark by filing a separate cancellation/revocation action before the GTMO. However, it remains at the court’s discretion to suspend the proceedings brought before it, in case a cancellation/revocation action had already been filed against the plaintiff’s trademark before the GTMO, prior to the filing of the civil claim. In such an event, the court may also order provisional measures in favor of the plaintiff so that the latter is not left without any protection at all.

Finally, the courts shall dismiss a counterclaim for revocation or invalidity if the matter has already been decided in proceedings with the same subject between the same parties.

As to the objection of non-use of the earlier mark(s), the defendant has the right within 30 days as of the date the civil claim was served on it, to file and serve on the plaintiff—within the same 30-day time limit—a special claim before the competent court, requesting that the plaintiff prove use of the earlier mark. Should the plaintiff fail to do so or manage to prove use for only part of the goods/services, then the court will dismiss the claim either in part or in whole.

The defendant in interim injunction proceedings is also granted the right to file a counterclaim for invalidity/revocation of the earlier trademark(s). However, a negative decision for the earlier trademark owner does not have effect erga omnes and does not affect the status of the earlier mark.

The new law tackles more decisively the abuse of trademark filings by defendants, providing that not only in interim measures, but also in main proceedings, the filing of a trademark application by the defendant does not impede the issuance of a decision.
The new law also introduces the intervening right defense in infringement proceedings in favor of the proprietor of a later registered mark. In this context, the proprietor of the earlier trademark cannot prohibit the use of a later registered mark if that later trademark would not be declared invalid.
Translation expenses are now specifically mentioned in the expenses awarded to the trademark owner by the court.
The courts may now order publication of their decisions on social media and not only in traditional media.
The new law provides that infringers are now liable for damages only in cases of gross negligence or willful misconduct and not in cases of (slight) negligence. This is a major setback in the protection system that raises the evidence bar higher for trademark owners and would allow especially non-repetitive infringers to escape damages, not to mention defendants in parallel import cases. It remains to be seen whether the Greek courts will scrutinize such limitation of liability on the basis of constitutional grounds, that is, as a disproportionate limitation of the right to judicial protection.
Licensees can no longer file for interim measures since the new law provides that interim measures are filed by the person who has the trademark registered in its name. Depriving licensees from this right disturbs licensing agreements in which it has been agreed that the licensee would undertake the enforcement of the trademark. Under the new regime, the licensor should always be involved, at least in interim proceedings.
Finally, with regard to new civil courts’ jurisdiction, invalidation/revocation proceedings (and opposition proceedings) are, by definition, administrative proceedings and as such, the administrative courts will hear related appeals. The new law departs from what had been standard practice for decades and transfers appeals to the civil courts by what seems to be a novel legal construct.

In other words, some of the appeals on decisions issued by the GTMO will be heard by administrative courts and others by the civil courts, leading to a complicated situation where the matter is split. It remains to be seen if such arbitrary transfer of matter that by law belongs to the administrative courts will stand the test of possible objections raised before courts.

Regarding the implications for “goods in transit” under new Trademark Law 4679/2020, the following matters are of interest:

The new law broadens the available remedies against intermediaries, which up to now was limited to the right of the trademark owner to request removal of the goods, but not, for example, destruction of the infringing goods.
Notwithstanding conformity with the Directive, the new law lowers protection in transit cases. Previous Trademark Law 4072/2012 allowed protection in all cases where infringing goods passed through the Greek territory. This protection is now limited only to cases where the goods are originating from a third—non-EU—country and only if the goods bear a mark identical to the registered trademark.

INTA’s Suggestions

Of the points raised by INTA during the consultation of the implementation of the Trademark Directive, the following is noted:

Oppositions are possible both for relative and absolute grounds. The new law has interpreted the Directive as not precluding opposition on absolute grounds, so such opposition is provided in the current law in the same way as the pre-existing law.
The new law includes signs of high symbolic value—such as religious symbols, badges/emblems/escutcheons of public interest not covered by Article 6ter of the Paris Convention, unless consent has been given by the competent national authority—as grounds for refusal or invalidity.
The Directive option to provide for the possibility for a registration in case a distinctive character was acquired after application but before registration of the mark is not addressed in the new law.
Further relative grounds for refusal or invalidity—such as prior unregistered rights, personality rights, copyright, and other industrial property rights—are all included in the new law, as they were in the pre-existing law.
Also included in the new law is the option to provide for the impossibility to apply for a declaration of invalidity based on acquiescence for a period of five years to also apply to the proprietor of other earlier rights.
As for collective marks, the new law has made use of the Directive option that a collective mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, such signs or indications, provided that third party uses them in accordance with honest practices in industrial or commercial matters. In particular, such a mark may not be invoked against a third party that is entitled to use a geographical name.
Regarding administrative revocation and invalidity actions, INTA had advocated that the administrative proceedings created by the Directive should be an alternative to any court procedures that member states already had in place. In Greece, office proceedings for revocation and invalidity actions already existed, and what was introduced were court proceedings, which, in effect, is the opposite of what INTA advocated for.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.