International report - New Trademark Law finally comes into force 09 May 12
Ballas, Pelecanos & Associates LPC - Greece
Following various attempts to reform the Greek trademark legislation, Greece's obligation to implement the EU IP Rights Enforcement Directive (2004/48/EC) finally led to the adoption of the new Trademark Law on 11th April 2012. Only partially enacted so far – four of the law’s 11 chapters will enter into force in October 2012, mainly in order to allow enough time for the necessary restructuring of the Trademark Bureau – the new law brings about several changes to the existing trademark framework.
Trademark registration procedure
The following changes have been made to the registration procedure:
- Electronic filing has been introduced. Further requirements (eg, technical and administrative requirements) will be established by respective decisions.
- Trademark applications shall include the transliteration of non-Greek/Latin characters to appropriate Greek/Latin characters.
- Trademark applications will no longer be examined by the Administrative Committee for Trademarks (ACT); examination will instead be undertaken by the examiners of the Trademark Bureau, following the Community trademark procedure.
- Although the trademark registration procedure generally follows the Community trademark system, examiners can also decline registration for relative grounds for refusal.
- If grounds for refusal exist, then following the relevant notification, applicants may revoke their application, limit the trademark’s range of protection or submit written observations to the examiner.
- Division of the trademark application or registration into several partial applications or registrations is allowed.
- Disputed trademark applications can be registered and trademark registrations can be cancelled when the relevant decisions of the administrative institutions and the courts become final, as opposed to “irrevocable” under the former regime.
- Waivers and limitations of the designated products and/or services are now permitted in any part of the trademark registration procedure.
- Letters of consent can be submitted at any time during the trademark registration procedure – that is, both before the administrative courts and during ACT proceedings.
Procedure before ACT
The procedure has been amended as follows:
- The opposition deadline has been reduced to three months from four and a half months, as from the date of publication of acceptance of the trademark application on the Trademark Bureau’s website.
- Regarding proof of use, the Community trademark paradigm is adopted, thus enabling more efficient dispute resolution.
- Claimants are now obliged to notify recourse actions to third parties entitled to intervene in the proceedings.
Rights conferred by trademarks
Under the new law, trademarks confer rights as follows:
- Both registered trademarks and trademark applications can be assigned.
- Partial assignment is possible, provided that it will not mislead consumers.
- Assignment of an earlier trademark to a new trademark owner will permit the registration of the new trademark, even during proceedings pending before the Second Instance Administrative Court (but no later).
- The ACT’s separate hearing for licence approval has been abolished; licences are automatically recorded upon filing of the respective application.
- Licensors can pursue licensees for trademark infringement if the latter fail to comply with the licence terms.
- Exclusive licensees are entitled to initiate infringement action against third parties, provided that the licensor has not taken such action.
- In the event of licensors’ claims, licensees have the right to an intervention for the damages suffered.
The new law provides as follows in regard to trademark infringement:
- Trademark owners can now prohibit trademark infringement resulting from:
- The circulation of counterfeit products in transit.
- The production of authentic products destined to circulate unbranded.
- The circulation of products whose trademark has been removed or which bear a different trademark.
- The owner of a previous trademark registration is not entitled to prohibit use of a new trademark registration if it has knowingly put up with its use for a period of five consecutive years.
The civil protection provisions of the directive have been transposed into the new law, as follows:
- Damages can now be calculated based also on the profits gained by the infringer.
- Claimants can seek the amount of royalties that would have been due if a licence had been granted.
- Profits derived from the infringement can be awarded to the claimant, regardless of the infringer’s liability (intent or negligence).
- Provisional measures:
- Action against intermediaries is expressly allowed.
- In case of commercial-scale infringements, the court can – even without prior hearing of the respondent – order the provisional seizure of the respondent’s assets or the freezing of its bank accounts. However, circumstances that endanger payment of the indemnification (claimed with the obligatory main action) must be proven by the claimant.
- Courts can order the disclosure of financial, banking or commercial documents or information related to infringers.
- Publication of court decisions – all civil decisions on trademark infringement matters can be published, while publication of criminal decisions is reserved for final decisions only. Such publication includes all media, including the Internet.
The infringement of a famous trademark is now considered to be a criminal offence. The existing penalties have become stricter, the maximum imprisonment sentence has been doubled tο six months and the pecuniary penalty has been increased to €6,000.
For identical marks (counterfeiting), widespread commercial trademark infringement is regarded as an aggravated circumstance, incurring much stricter penalties (a minimum of two years' imprisonment and a monetary penalty of between €6,000 and €30,000).
Loss of trademark rights
In the case of existing licences, trademark owners must inform licensees of the intention to surrender. In addition, a distinction has been introduced between the revocation and declaration of invalidity of a trademark, and the respective cancellation actions can be filed.
Other provisions of the new law include the following:
- The rules on international trademark applications/registrations designating Greece have been consolidated.
- Foreign rights holders may file recourse actions against decisions of the Trademark Bureau or the ACT within 90 days of notification of the decision.
- Reinforcing the Greek element, the Greek product or service trademark has been introduced, designating products or services that are exclusively of Greek origin.
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