Claiming damages for trademark infringement
On April 11 2012 the new Trademark Law (4072/2012) incorporated the EU Enforcement Directive (2004/48/EC) into Greek law, significantly reforming the country’s trademark regime. The long-awaited implementation had been delayed, since the initial plan was to incorporate the relevant provisions into the existing legal framework. The Trademark Law thus provides a new comprehensive and robust trademark regime.
One of the major issues that the implementation of the Enforcement Directive was designed to resolve was damages claims in trademark infringement cases. The previous Greek Trademark Law included no provisions for damages, meaning that rights holders had to rely on the provisions of civil law. This was far from straightforward as claimants had to calculate precisely and prove the exact amount of damages that they had suffered as a result of the defendant’s infringing activity in order to be awarded that amount on the basis of tort law. This was the main reason, in addition to the fact that Greek law does not provide for punitive damages, that rights holders used to claim so-called ‘moral damages’, allowing the court to calculate a fair amount at its own discretion and based on the facts of the case.
The new Trademark Law introduces rules and practices to expedite certain court proceedings, in accordance with Article 13 of the Enforcement Directive. In particular:
rights holders may claim the amount that they would have requested as royalties if they had already granted a licence to the defendant. With respect to the exact calculation of this amount, such a rule may prove useful in cases where the rights holder has already granted a paid-up licence to a third party or there is a usual market value for such licences.
in case there is no infringer’s liability (ie, the infringer was not or could not have been aware that it was infringing the trademark) the rights holder may claim any profits or benefits gained by the infringer; and
the Trademark Law stipulates that in order to calculate damages the court must take into account, among other things, the negative economic effects resulting from the infringement and the profits and benefits gained by the infringer. Although aligned with the provisions of the Enforcement Directive, the Trademark Law’s wording does not integrate smoothly into the Greek legal system. Unless precisely calculated, these factors could be taken into account for the abstract determination of moral damages.
The special rules on damages would not have been as effective per se had the Trademark Law not implemented a series of provisions relating to the disclosure of evidence held by the infringer and information on the infringing activity (eg, distribution networks). One relevant court case already reported in the Greek databases is Decision 6398/2014 of the Athens Court of First Instance, which ordered the defendant to:
“provide the claimant with formal documents and evidence which are in their possession or under their control and relate to (a) names, surnames and addresses of the manufacturers, importers and suppliers of the counterfeits, as well as, in case of subsequent disposal on behalf of the defendant, the same details of the purchasers-traders (in retail or in bulk) and b) the exact quantities of counterfeits which were imported, exported, supplied with, offered for sale and are possessed today as unsold stock, in their premises, as well as the value of such products.”
On a more technical note, rights holders should bear in mind that trademark infringement cases are heard by the courts of Athens and Thessaloniki within six months. Given that these courts are also the only Community trademark courts in Greece, Community trademark holders may choose to pursue cases in other Greek cities to avoid lengthy procedures and mounting travel and accommodation expenses.
The new legislation significantly modifies the legal landscape in Greece in an attempt to harmonise the Greek legal trademark market with that of the European Union through new special provisions and cost-effective proceedings that establish new grounds for successful damages claims and the prompt restoration of rights in infringement cases.
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