Saturday morning. There is no more coffee. We are forced, and we are not happy about it, to go to the supertrademarket in our neighborhood. Among the numerous options, we are looking for the specific brand, for “our” coffee. We take it from the shelf, pay for it to the cashier and then enjoy it. The same happens with a variety of products and choices. But it is not just about us. Each consumer, as a rule, distinguishes (and often chooses) a specific product or service from those of other companies on the basis (among other things) of the (distinctive) trademark of the business from which it is produced. The value of the trademark is obvious. In a logical sequence: the need to secure and protect it is also obvious.
The significance of the trademark
It is well known that the trademark is one of the important assets of a business. Let’s think about some of the global business giants: Nike, Apple, Mercedes, Harley Davidson, CocaCola, Google. What would be the impact on their sales and, ultimately, their value, if their brand (and its distinctive power) was not there?
But the value of the trademark does not only concern the giants. It concerns every business. Ours as well.
Precisely, however, due to the importance and value of the brand, every business (must) invest the necessary (sometimes significant) capital in order for their brands to be an element of personalization of its products. The trademark, in this way, manages to maintain and develop its most important function – what we call the function of indicating origin. It is the function that connects the product (or service) with the business from which it comes.
Consumers easily perceive, based on the discretionary power of the brand, the connection of product/service with the business of origin. In this way, they are facilitated in their choice. And this final choice is the one that creates (and/or develops) the relationship of consumer confidence in relation to a particular business. And the specific trust of the consumers is what drives, in turn, the business to maintain and improve the quality of its products and services.
The concept of the trademark
But what are the distinctive features that fall within the concept of the trademark?
The recent law (Law 4679/2020) defines (among other things) the content of the concept of the trademark. It provides in particular (: Article 2 §1) that: “The national trademark may consist of any sign, in particular words, including the name of persons, or of designs, letters, numbers, colors, the shape of the product or the packaging of the product, or by sounds, provided that these signs:
- a) are able to distinguish the products or services of one undertaking from the products or services of undertakings; and
- b) they may be represented in the register in such a way as to enable the competent authorities and the public to identify clearly and precisely the object of the protection awarded to the holder.”
An innovation of this law is the elimination of the obligation of graphic representation of the trademark during its submission. It is sufficient for the representation of the trademark “… to be submitted to the register in any appropriate form, using widely available technology, which makes it possible to represent it clearly, accurately, independently, makes it easily accessible, comprehensible, permanent and objective” (art. 2 § 2).
This arrangement now allows audiovisual and dynamic 3D trademarks to be accepted in the register. Also: audio and motion trademarks.
The right on the trademark
The duration of the right
As provided by article 3 of law 4679/2020 “The right on the trademark is acquired by registering it in the register” (art. 3 of law 4679/2020). The registration of the trademark lasts for a decade and it is possible to renew it every decade (art. 36 §§1, 2).
Power of the beneficiary to act
Once the registration has taken place, the beneficiary acquires a formal, absolute and exclusive right to use the trademark (int .: 1418/2021 Single-Member Court of First Instance of Athens). They acquire, in particular, the right to use the trademark, to attach it on the products they wish to distinguish, to classify the services provided, to attach it on the wrappers and packaging of goods, on postal paper, on invoices, price lists, notices, all kinds of advertisements, as well as other printed material, and use it in electronic or audiovisual media or social media (art. 7 §1). They can, at the same time, exploit the trademark in any other way, e.g. transfer to a third party or grant an exclusive or non-exclusive license (art. 16 & 17).
The beneficiary can, through the registration of the trademark, prevent third parties from exploiting their own effort and investment. Possibly, we could characterize the registration as a way of solving the problem of the smuggler (the free-rider problem) -as this is reflected in this case.
Power of the beneficiary to prevent/forbid
The proprietor of the trademark, following the trademark’s registration, has the right (: art. 7 §3) to prohibit any third party from using in transactions (without their consent), a mark for products or services, which:
(a) is identical to the trademark and is used for goods or services identical to those for which the trademark is registered;
(b) is identical or similar to the trademark and is used for products or services which are identical or similar to the goods or services for which the trademark has been registered, if there is a likelihood of confusion for the public. The risk of confusion includes the risk of the mark being associated with the trademark,
(c) is identical or similar to the trademark, whether used for products or services identical, similar or not similar to those for which the trademark has been registered, if it enjoys a reputation within Greece and the use of the trademark, without reasonable cause, would create an unjust benefit from the distinctive character or reputation of the trademark or would be detrimental to that distinctive character or reputation.
In fact, the recent law, aiming at more complete protection of the beneficiary, gives them the right to prohibit third parties- non-beneficiaries from committing preparatory acts, such as, for example, supply, possession, trade of trademarks, labels, packaging, etc. (art. 8).
The trademark registration process
In order for the registration of a national trademark to start and take place, the interested party must submit a trademark registration statement (paper or electronic) to the Trademark Directorate of the Ministry of Development and Investment (art. 20).
To clarify, not any mark for which a relevant application is submitted is registered as a trademark. The law explicitly provides grounds for inadmissibility. The grounds of invalidity are either absolute (eg when the trademark lacks a distinctive character – art. 4) or relative (Article 5). The relative grounds of invalidity are related to any previous registration of an identical or similar trademark.
Another innovation of the recent law is the abolition of ex officio rejection of a trademark for relative grounds of invalidity. A prior objection is now required from the proprietor of an earlier trademark in order for the registration not to be accepted. This change is based on the legislator’s choice to protect the beneficiary who actually uses the trademark, which, in fact, they have to prove (art. 28).
Trademark registration can be done on a national, European, and international level. Respectively, the national, European, and international trademarks coexist in the legal order of our country (and their content is defined in art. 1 §3 a’, b’ and c’ respectively).
Protection against trademark infringement
Despite its registration, the right to a trademark may be infringed. The law provides for a number of behaviors that may, inter alia, infringe on the trademark, and are common grounds for infringement (art. 7 §§4 & 5). The case law recognizes that ‘… In the event of an infringement of a right on a trademark by the use of a counterfeiting third party… the goods or services of the proprietor and the third party, for the distinction of which the trademark is used by them, must be the same or similar “(ind .: Cour of Appeal of Thessaloniki 1261/2016 Review of Commercial Law (ΕΕμπΔ) 2017,449, 1918/2021 Single-Member Court of First Instance of Athens – Court for Interim Measures). The proprietor of the trade trademark is protected in cases of infringement. This protection can be on an administrative, civil, criminal level.
Administrative protection
The administrative protection is related to the relative grounds of invalidity, which have already been mentioned above. When the conditions of the law are met, if a beneficiary object, a sign identical or similar to their registered trademark will not be accepted for registration. In addition, if any identical or similar trademark has been registered, then it is canceled after the application for annulment (art. 5 §1 and 52 Law 4679/2020).
Civil protection
Temporary judicial protection (: taking precautionary measures) can be requested by anyone who has a claim for removal and omission due to infringement of the registered trademark of the same (art. 42 §1 and, int., 1918/2021 Single-Member Court of First Instance of Athens – Court for Interim Measures).
Furthermore, the beneficiary can request final protection by bringing an action based on the provisions on torts (art. 914 et seq. Of the Civil Code) and the special provisions of the law (art. 38).
First, the beneficiary can sue the person who infringed their right to remove the infringement and omit it in the future (art. 38 §1). The court decision that will be issued, in order to achieve its indirect execution, can threaten for each violation a fine of up to one hundred thousand (100,000) euros in favor of the beneficiary as well as personal detention for up to one (1) year against the offender (art. 38§3).
The beneficiary is entitled, in addition in case of infringement, to claim compensation. However, Law 4679/2020 requires compensation and monetary satisfaction for the claim for moral damage deceit, or gross negligence. It is not enough that the one infringing is simply at fault. Conversely, if there is no deceit or gross negligence on the part of the debtor, the proprietor may claim the amount which the former benefited from the exploitation of the trade trademark without the consent of the proprietor. Alternatively: the return of the profit that the debtor obtained from this exploitation (§8).
Among the major changes to the recent law is the transfer of jurisdiction from the administrative to the civil courts regarding the adjudication of annulment applications.
It should be noted, however, that the new law provided that in the event of a claim for infringement, the defendant was entitled to seek a rebuttal or annulment of the trademark on which the action was based. In this case, the acceptance of the counterclaim will result not only in the rejection of the action but also in the annulment of the trademark.
Criminal protection
Infringement of the right on the trademark constitutes a criminal offense of a serious misdemeanor nature (art. 45). The offender is threatened with imprisonment and, cumulatively, a fine.
The trademark is an important asset for businesses. Its value and importance prove, at times, inconceivably great. Recent legislation has modernized the outdated institutional framework – in the right direction. But one thing is certain: legislation will never prevent trademark abusers (those who choose to reap the benefits of the efforts, investments, and trademarks of third parties) from committing illegal activities.
It is therefore up to the businesses themselves to protect their trademarks and interests. On a practical level: it is desirable to be constantly vigilant and ready for judicial, often long, actions and engagements with not negligible costs.-
Stavros Koumentakis
Managing Partner
P.S. A brief version of this article has been published in MAKEDONIA Newspaper (January 30th, 2022).
Disclaimer: the information provided in this article is not (and is not intended to) constitute legal advice. Legal advice can only be offered by a competent attorney and after the latter takes into consideration all the relevant to your case data that you will provide them with. See here for more details.