Trademarks identify products and services and distinguish a manufacturer or business from competitors. Trademarks can become the most valuable asset of an enterprise.
Trademarks in Greece are regulated by recent Greek Trademark Law No. 4679/2020, the full title of which is “Trademarks – Implementation of the Directive (EU) 2015/2436 to approximate the laws of the member states relating to trademarks and of the Directive 2004/48/EC on the enforcement of intellectual property rights and other provisions”. The law was published in the government’s official gazette FEK 71/A/20.03.2020 and came into effect on March 20, 2020.
A trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
‘Non-traditional’ marks are also protected and registered in Greece as national marks, i.e. 3D (shape) marks, position marks, pattern marks, colour per se marks, sound marks, motion marks, multimedia marks, hologram marks. Specific registration procedures have been established for the collective and certification marks.
Greece is a member of the European Union and, therefore, European Union Trademarks (EUTMs) filed at the EUIPO are afforded with equal protection to the protection of national marks (art. 83 of Greek TM law No. 4679/2020).
The new TM law also applies to International Registrations (IRs) under the Madrid Protocol, where the basis mark is a Greek trademark application or registration, and to IRs designating Greece (art. 71-82 of Greek TM law No. 4679/2020).
Foreign trademark applications are granted a right or priority of six months from the date of the application in the home country. The priority certificate must be filed within three months from the application date in Greece.
The benefits of registration of a trademark include access to the administrative, civil and penal law proceedings for the protection against unlawful use and/or registration of an infringing sign. Enforcement is easier than for a non-registered mark. The mere submission of the trademark certificate is sufficient for a legal action against the unauthorized use of an identical sign. Trademark registration is prima facie evidence of ownership and validity of the same. Under a general request filed at customs the owner is notified for suspected unauthorized goods and seizure by customs authorities of imported unauthorized goods is possible.
Unregistered marks, called in particular ‘distinctive signs’, are protected according to articles 13–15 of the Unfair Competition Law No. 146/1914, provided they possess distinctive character and have been used in commercial transactions in a systematic, continuous, substantial way for a long time, so that the sign has been established in the market as a distinctive feature of the enterprise using it.
Personal names and company names that have not been registered as trademarks are protected under special provisions of civil and commercial laws that protect the name of a person and the company names.
A Greek trademark application can be filed electronically or in hard copy on site at the Greek Trademark Office, which was recently relocated to the new premises of the Hellenic Industrial Property Organisation (OBI) in Athens.
The trademark application for a foreign entity must be filed together with a Power of Attorney, simply signed by the applicant, in .pdf format. The official fee for the e-filing of a trademark application in one class is €100 plus €20 for each additional class. The official fee for the representation of the foreign entity is €214.
The Examiner of the Greek TMO examines the trademark application and does no longer refuse it based on relative grounds for refusal. The Examiner examines formalities, classification, priority when applicable, the regulations governing use of the mark for collective and certification marks and the absolute grounds for refusal. The Examiner notifies the applicant or its representative, by e-mail, of any deficiency or absolute ground for refusal and gives a time limit of 30 days to remedy it and/or submit observations. Extensions of the time limit are possible. The application must be accepted for registration within 30 days from the filed response. The Examiner’s decision partially or wholly refusing an application is subject to appeal within 60 days. If no objection is raised, the Examiner’s decision accepting the application for registration is published on the website of the TMO within 50 days from the filing date. Following the filing of the application, the Researcher of the TMO performs a trademark search and informs the proprietors of earlier registrations/applications for opposition purposes.
The mark is registered three months following the publication of the Examiner’s decision accepting its registration, provided no opposition by third party is filed, namely the mark is registered within 4-7 months from the filing date. The minimum cost to obtain a trademark registration in Greece in one class is approximately €450. In case of an opposition, the mark may be registered within one year up to seven years following the filing date once the opposition proceeding before the Administrative Trademark Committee and possible appeals at the administrative courts are finalized.
A Greek trademark registration is valid for a period of 10 years from the filing date of the application and may be renewed for further 10-year periods. No proof of use is required to be submitted for registration or renewal purposes. The renewal request may be submitted six months before expiration, or within a grace period of six months after the expiry of the registration or of the subsequent renewal thereof, but the rights obtained by third parties within that grace period are not affected under the new regime. The official fee for the renewal of a mark in one class is €90 plus €20 for each additional class.
No prior use is required to be submitted for filing an application nor for its registration. The mark is liable to revocation if, within a continuous five-year period, it has not been put to genuine use in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. Such use must not have been suspended for a continuous period of five years after the registration date.
A notice of opposition by a third party may be filed any time after the filing date until three months after the Examiner’s decision accepting registration of a mark is uploaded (published) on the website of the Greek TM Office. The basis for the opposition can be absolute grounds for refusal, including bad faith, or relative grounds for refusal, i.e. prior rights.
The opposition is heard at a hearing before the Administrative Trademark Committee (ATC), within four to eight months from filing the notice of opposition. A time limit of two months is granted by the ATC Chair following a joint request made by the parties for an amicable settlement of the dispute. At the opposition hearing, the applicant of the contested sign can request Proof of Use of the opponent’s mark, during the five-year period preceding the filing date or date of priority of the later trademark, or that proper reasons for non-use existed. In the absence of proof to this effect, the opposition is rejected and the substance of the case is not examined by the ATC. Following the opposition hearing the ATC issues its decision in approximately four to eight months. The ATC decision can be appealed at the Administrative Court of Athens at first and second instance. For points of law the decision following the second appeal can be annulled by the Conseil d’Etat.
The cancellation actions against a trademark registration are the application for revocation and the application for declaration of invalidity.
A trademark can be revoked on the grounds of non-use or cease of use for five consecutive years following its registration, or because as a result of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered; or because of its use it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. The application for revocation of a trademark is filed at the TMO and heard by the ATC. The ATC’s decision is subject to appeal at the civil court in Athens for points of law and substance. Notification of the Registry at the TMO is required.
A trademark can be declared invalid on the basis of absolute or relative grounds for refusal. The application for the declaration of invalidity is filed at the TMO and heard by the ATC. The ATC’s decision is subject to appeal at the civil court in Athens for points of law and substance. Notification of the Registry at the TMO is required. The proprietor of an earlier mark or holder of another earlier right – such as unregistered right in a sign, right in a name or other personality right or copyright – is not entitled to file an application for the declaration of invalidity against a later trademark registration, where the proprietor/holder has acquiesced, for a period of five successive years, in the use of a later trademark registration while being aware of such use, unless registration of the later trademark was applied for in bad faith.
Legal actions against trademark infringement can be initiated in the civil or criminal courts or both. Injunctions and temporary restraining orders can be brought at all civil courts of first instance in Greece. The Greek TM law contains criminal provisions threatening imprisonment of at least six months and pecuniary penalties (at least €6,000) against the infringer that acts knowingly and for well-known marks for willful use by the infringer. In cases of identical sign and identity or high similarity of the goods or services or when the amount damage caused is large or made on a commercial scale, imprisonment is threatened for at least two years and pecuniary penalty between €6,000 and €30,000. Further provisions of the criminal laws may apply, such as for fraud or forgery. The limit for claiming damages is five years from the end of the year that the infringement took place for the first time. The general time limit for filing an infringement action is 20 years from the date the trademark owner first becomes aware of the infringement.