INTA Holds First Judges’ Workshop for Greek Judiciary

INTA’s Enforcement Committee on May 26 and 27 hosted its first Judges Workshop for the Greek judiciary as part of its ongoing initiative to provide advanced seminars in intellectual property (IP) developments and process to the judiciary worldwide. Over the two days, the presentations by high-profile judges and the ensuing discussions offered a much-valued glimpse into the judicial process and deliberations on the issuance of preliminary injunctions and other decisions.

Opening the workshop, Dr. Théophile Margellos, Hon. Professor of the Commercial Law Department of the University of Alicante, Spain, and former President of the Boards of Appeal of the European Union Intellectual Property Office, highlighted the importance of harmonization in trademark law. He also noted the success of the EU Trade Mark (EUTM) system—which the public doubted when it was first launched—as well as the importance of the amicable resolution of disputes through alternative dispute resolutions proceedings, such as mediation.

Presentations were made by Judge Lars Meinhardt, Presiding Judge of the Munich Higher Regional Court, and Lord Justice Richard Arnold of the Court of Appeal of England and Wales, on day one of the workshop.

Judge Meinhardt provided insights into the requirements and process for injunctive relief under German law with a view to promoting this procedure as one of the most important tools available to rights holders to enforce IP rights and minimize damage created by infringements. His presentation addressed several of the key prerequisites German judges review before issuing a decision, encouraging the Greek judiciary to use this protection mechanism.

In his presentation, Lord Justice Arnold focused on the options and provisions regarding counterclaims for invalidity in proceedings before EUTM courts. Pointing to the SkyKick case as an example, he discussed counterclaims for partial invalidity based on bad faith and the consequences for pending infringement proceedings.

Based on these principles, both judges commented on the practice of defensive filings and potential consequences from this and other recent decisions, namely the risk that all or parts of trademarks filed for goods/services without any intent to use may be invalidated upon a defendant’s counterclaim.

One of the key discussion points following the presentations was the requirement under INTA’s 2020 Board Resolution that judges refrain from analyzing in detail the validity of claimed rights or entertaining a counterclaim for invalidity during preliminary proceedings. While both judges agreed that questions on validity of claimed rights belong before the patent and trademark offices or administrative courts, this is a disputed principle according to the results of an Enforcement Committee survey.

On the second day of the workshop, which took place entirely in Greek, Judge Evangelos Chatzikos of the Court of First Instance of Athens, and Judge Ioanna Mamali of the Athens Court of Appeal, discussed the criteria used under traditional Greek case law for finding that a mark is famous, and whether they are compatible with new criteria that, in the last years, have crystallized under the guidance of the Court of Justice of the European Union (CJEU). They also discussed the recently introduced transfer of competence to hear appeals of decisions by the Greek Trademark Office on cancellation actions (invalidity and revocation) to the civil courts from the administrative courts.

Judge Chatzikos pointed out the discrepancies in traditional Greek case law which requires criteria for famous marks that are now deemed contrary to EU case law, such as (1) uniqueness and originality of the trademark and (2) a positive image among the public. He explained, however, that recent first instance decisions appear to be aligned with the CJEU rules and criteria and anticipates that the Greek Supreme Court, still applying the old criteria, will also at some point embrace the new criteria of the CJEU.

Judge Mamali presented the range of new provisions on the transfer of competence. Given the nature of the Greek Trademark Office as a public body, the courts with competence to hear appeals under Greek procedural rules are the administrative courts. However, in highly exceptional cases, the Greek Constitution allows for civil courts to hear cases that fall within the natural competence of administrative courts and vice versa. Trademark cancellation disputes were found by the legislator of the new Greek Trademark Law to justify the exceptional change of the natural competence from administrative to civil courts, given that otherwise it would not be possible for civil courts to hear counterclaims of invalidity/revocation against national marks, in the same way as they do for EUTMs.

The speakers discussed practical issues that arise from such new competence and agreed that more will probably arise, such as, for example, the case of an opposition being heard alongside a cancellation action before the Greek Trademark Office, so that the appeal of the ruling would be subject to both administrative courts and civil court jurisdiction. This notwithstanding, the application of the regular provisions continues since at this early stage not many cases have been introduced before civil courts under their new competence.

INTA would like to thank the speakers for their excellent presentations and engaging discussions.

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. 

© 2022 International Trademark Association