Malamis & Associates
Seizures and detentions of counterfeit goods took place in significant volume in Greece during 2018. Large seizures also took place involving goods in transit to neighbouring countries of the Balkan peninsula.
A significant trend is the separate import of non-branded merchandise and the brands to be affixed on them. The same are shipped separately to local retailers, with the use of intermediaries between the importer and final retailers.
Significant counterfeit activity continues in respect of products that are subject to excise (consumption) taxes (eg, tobacco products and spirits). While 2018 has seen a particular increase in counterfeit coffee.
Most counterfeit goods are imported by sea from Asia – mainly China – and transit through Greece for sale in the Balkan and Central European countries, as well as Italy.
Further, a large number of counterfeits enter Greece from neighbouring Turkey, crossing the land border from Turkey in trucks, small vans and tourist buses, as well as by sea to the islands. In addition, counterfeits originating from Turkey also arrive in Greece from Bulgaria, after having first crossed the Turkish-Bulgarian border by road so as to avoid border controls.
Counterfeit goods are also imported for sale within Greece; however, the quantities seized indicate that these counterfeits are targeted not only at local consumers, but also at tourist markets, since the population in Greece more than triples from May to October each year due to tourism.
Due to local market conditions, imports from Asia often require large minimum quantities and pre-payment. Therefore, small local factories and workshops are increasingly meeting market demand for counterfeits by producing goods in small quantities and supplying them on demand, without the need to keep large stock in warehouses, especially in the fields of clothes, leather goods and jewellery.
Provisions on the enforcement of IP rights and anti-counterfeiting measures are set out in various legal instruments, including the following:
- Trademarks – Articles 121 to 183 of Part 3 of the Trademarks Law (4072/2012) and Articles 14 to 40 of Part 3 of Amending Law 4155/2013, which set out the substantive law on trademarks, trademark prosecution and litigation and anti-counterfeiting protection for all IP rights. These provisions are expected to be amended in 2019 by a new draft law intending to transpose Directive 2436/2015 in Greek law.
- Patents and utility models – the Technology Transfer, Inventions and Technological Innovations Law (1733/1987), as amended, and Chapter 4 – Industrial Property Issues of Law 3966/2011, which implements the EU IP Rights Enforcement Directive (2004/48/EC).
- Industrial designs – Law 2417/1996 on the implementation of the Hague Convention for the International Registration of Industrial Designs and Decree-Law 259/1997, as well as Chapter 4 – Industrial Property Issues of Law 3966/2011.
- Copyright – the Law on Copyright, Related Rights and Cultural Issues (2121/1993), as amended, which implemented the IP Rights Enforcement Directive in 2001.
- Acts of unfair competition – Law 146/14, as amended.
- Border measures – the Customs Code and the EU Customs Regulation (608/2013), which is directly applicable.
- Torts and protection of personality – the Code of Civil Procedure and the Civil Code.
- Infringements that constitute a criminal offence – the Criminal Code and the Code of Criminal Procedure.
The EU Customs Regulation and the Customs Code govern border seizures in Greece.
The vast majority of customs actions are initiated by the rights holder filing an application to request that Customs inspect suspect goods to determine whether they are counterfeit and seize them if necessary. Such applications are valid for one year and can be filed again thereafter.
Often customs officials act based on a suspicion of infringement, given a number of indications. In such cases Customs will identify the rights holder’s registered representative in Greece by contacting the Trademarks Office. The rights holder then has three working days in which to file an application for customs intervention.
Seized goods will be destroyed on confirmation from the rights holder that they are counterfeit and with the agreement of the importer. Seized goods will also be destroyed if the importer is notified in writing and does not object by the deadline, or if the address declared in the importing documents is incorrect.
The costs of destroying counterfeit goods are borne by the rights holder. However, by commencing a court action the rights holder may seek compensation from the importer for such costs, as well as for storage costs that may be incurred if destruction is delayed.
The importer or its representative is notified of both the seizure decision and the destruction decision. Under the Customs Code, the importer has 10 working days within which to lodge a written objection to either decision. In case of objection by the importer to simplified destruction, the goods will continue to be detained on the filing of a court case to establish the infringement of the IP rights in question.
Customs also imposes fines on importers of counterfeit goods for infringement of the Customs Code. This is the case, for example, when goods are declared to be destined for personal use or as samples, and it is revealed that they were destined for sale in trade.
If the rights holder does not respond within the prescribed timeframe, the goods are released.
According to the Trademark Law, counterfeit goods that are in transit in Greece are considered to be infringing goods that may be seized and destroyed. Therefore, Customs can also seize goods in transit.
Customs has the power to act anywhere within the Greek territory – it is not restricted to the customs territory. Customs officials patrol the highways, especially in northern Greece, for counterfeit items transported within Greece and may seize such goods regardless of whether the goods are destined for export.
Only a fraction of the counterfeit goods imported into Greece are seized at Customs, therefore rights holders should be vigilant in monitoring the internal market for counterfeit goods that have passed through Customs and are destined for the internal market or for transit to neighbouring countries. Such goods are stored before being sold to merchants or transported to tourist destinations.
In cases of criminal infringement, rights holders can turn to several competent authorities:
- the criminal police or financial police (under the Ministry of Public Order);
- the Body for Action against Economic Crime (under the Ministry of Finance);
- the Coast Guard; and
In Greece, trademark counterfeiting and piracy are criminal offences, while design and patent infringement are not criminal offences under the law.
The Trademark Law sets out criminal provisions against infringers. The infringement of a well-known trademark is explicitly considered to be a criminal offence.
According to Supreme Court jurisprudence, additional criminal offences included in the Penal Code may apply to trademark infringement – for example, forgery (Article 216 of the Penal Code), fraud (Article 386), as well as the acceptance and dissemination of objects of crime.
The rights holder must file a criminal complaint and show the existence of wilful infringement in order for the authorities to commence a criminal case for trademark counterfeiting, as trademark infringement is considered a private crime and is prosecuted only upon submission of a private request for prosecution. Such criminal complaint must be filed within three months of the criminal act or from the rights holder learning of it and of the identity of the counterfeiter (whichever is later); in cases of recurring infringement, each new infringing act resets the deadline. The rights holder may withdraw the criminal complaint if it so chooses.
In contrast, copyright infringement constitutes a criminal offence that the authorities may pursue ex officio (ie, without a complaint by the rights holder) if the prerequisite of wilful infringement is established.
The criminal prosecution is brought before the competent court at the location where the infringement took place.
A major advantage of criminal proceedings is that counterfeit goods may be seized by the authorities right away. A criminal court may also order destruction of the seized counterfeit goods.
The minimum imprisonment term for trademark counterfeiting is now six months and the minimum monetary fine is €6,000. Counterfeiting – that is, the unauthorised use of identical marks for the same or similar products leading to profit for the counterfeiter or damages to the rights holder on a commercial or professional scale – is regarded as an aggravated crime and incurs much stricter penalties (a minimum of two years’ imprisonment and a monetary fine of €6,000 to €30,000). A third party which knowingly infringes a trademark, even if it acted as an intermediary (eg, a distributor, importer, holder or exporter of infringing goods) also faces criminal penalties.
In cases of copyright infringement, criminal proceedings may lead to imprisonment of up to one year and a monetary fine of between €2,900 and €15,000. These may be increased to 10 years and €34,075, respectively, in cases of severe infringements. In such cases the infringer’s trading licence may also be revoked.
Seizures of counterfeit goods may be carried out by any competent law enforcement authority, in both open-air markets and warehouses and stores. If the owner of the goods does not contest seizure or if no proper tax or financial documents accompany the goods, they may be seized as counterfeit. If the owner contests the seizure, a written objection may be filed and the proper tax documents (eg, invoices showing the source or supplier) may be provided within a timeframe set by law.
If an objection is lodged, destruction will be postponed and the goods will be stored. However, if there are no objections, an administrative decision may be issued for the immediate destruction of the goods by simplified administrative procedure, without the need to wait for any court decision (civil or penal). This facilitates the authorities’ actions, frees up storage capacity and law enforcement authorities avoid having to guard storage areas, which is vital as the authorities often have limited resources.
A rights holder may also choose to bring a case before the civil courts. Civil protection takes two forms: injunctive measures and normal proceedings.
In a civil claim the rights holder seeks to reverse the effects of the infringement (a cease and desist order) and claim damages. The court may order the recall of infringing goods and other materials and their removal from the market or destruction. On the plaintiff’s request, the court may order publication of the decision in the media or online at the infringer’s expense. The new IP laws have fully incorporated the IP Rights Enforcement Directive with regard to civil actions and provisional measures against trademark infringers.
The rights holder or beneficiary may obtain a provisional court order against an infringer for the provisional seizure and withdrawal of the infringing merchandise before it enters into circulation through trade networks.
In the case of commercial-scale infringement or imminent infringement, the court can issue an ex parte order for the provisional seizure of the alleged infringer’s assets and the freezing of its bank accounts, provided that the trademark beneficiary provides evidence that the payment of compensation following a civil action will be endangered. In addition, the court may order the alleged infringer to provide all banking, financial and commercial documents and any other information regarding the infringing activities.
Provisional measures may also be sought and ordered by the courts against intermediaries whose services the infringer has used for infringement.
The civil courts enforce IP rights in cases of actual or threatened infringement. Discovery, as known in the common law system, is not recognised. The oral testimony of one witness for each side is allowed only in injunctive measures. In normal proceedings no oral examination of witnesses takes place, instead each side may submit up to five written sworn affidavits given by witnesses, held in front of a magistrate or a notary public. Experts may be heard as witnesses. In injunctive measures, a single judge decides whether to grant the preliminary ruling (in urgent cases) or the provisional order.
A provisional order may be granted immediately or within a few days of filing a petition for a preliminary injunction, following a hearing by a single judge.
In practice, a preliminary order is an important means of protection for a rights holder. In order to obtain such an order, the rights holder must prove that there is great urgency or imminent risk which must be avoided. This offers immediate remedies to the rights holder.
The judgment may be provisionally enforceable, upon request, even before an appeal has been heard.
On appeal, the hearing will generally take place between seven and 10 months after filing and the judgment will be issued approximately five to 10 months later. A final appeal to the Supreme Court is available based only on issues of law and follows the same timeframe as for the first appeal.
The burden of proof always rests with the plaintiff. To ease this burden, the Trademark Law provides that where the infringing mark is identical to the plaintiff’s mark, infringement may be proven simply by presenting to the court the trademark registration certificate from the Trademarks Registry.
Under the law, a licensee can file a civil suit together with the rights holder. If the licensee has the rights holder’s permission, it may seek to protect the right through infringement proceedings and compensation in its own name only. For a licensee to act alone, it must be the exclusive licensee; or the rights holder must have been informed of the infringement but not have acted to protect it. A licensee can always participate in infringement proceedings started by the rights holder to support the rights holder’s request.
Patent licensees may file a civil suit for patent infringement as long as the patent licence is recorded at the Patent Office.
In trademark infringement cases, damages in favour of the rights holder or beneficiary are calculated based on lost royalties, if the infringer would have been granted a licence, or lost profits. Further, in the absence of intent to infringe or gross negligence, the profits derived from the infringement by the infringer or lost by the rights holder may be awarded to the rights holder (unjust enrichment). In case of wilful infringement, the rights owner can also ask for moral damages.
In case of copyright infringement, the courts may grant the rights holder lost profits, account of profits or moral damages. In order to facilitate proof of damages, the law provides that pecuniary compensation may not be less than twice the fee that would be due for the form of exploitation carried out by the infringing party without authorisation. Instead of seeking damages, and regardless of whether the infringement was committed with intent or negligence, rights holders may demand recovery of the profits made by the infringing party from such exploitation.
In cases of patent and design infringement, if the infringement was intentional the plaintiff may choose from the following monetary remedies provided by law:
- compensation for damages (including actual loss, lost profits and moral damages, if these can be substantiated);
- account of profits; or
- payment of an amount equal to lost royalties – this amount must be substantiated and proven by the plaintiff.
The amount of damages claimed must be fully substantiated by the plaintiff and shall be the damages actually suffered by the plaintiff or the profits actually made by the defendant.
Punitive damages are not granted by law unless they are contractually agreed between the plaintiff and the defendant in the form of a penal clause in a prior contract and this contract is breached by the defendant.
Interest accrues from the date on which the lawsuit, including the compensation claim, is served to the defendant. The court assesses liability and quantum of monetary remedies within the same trial.
The civil courts that hear IP rights disputes are specialist IP courts with specialist judges. Greece has two EU trademark courts – special sections of the Athens District Court (competent for southern Greece and the islands) and the Thessaloniki District Court (competent for central and northern Greece).
The EU trademark courts also have exclusive jurisdiction over patent and design infringement disputes. Copyright disputes for which the Athens and Thessaloniki courts are competent are also heard by the specialist IP sections; in Piraeus, copyright disputes are heard by a specialist section with specialist judges.
Injunction applications are heard by general judges, as are criminal disputes.
The EU E-commerce Directive (2000/31/EC) was transposed into Greek law by Presidential Decree 131/2003. Articles 11 and 13 of the decree allow for the suspension of access to illegal content in the case of online infringement, following a court decision.
In addition, where online infringements are before the criminal authorities, the Special Force for Electronic Crime – part of the police – is responsible for the investigation of serious online crimes.
According to Article 64A of the Copyright Law, rights holders may apply for an injunction against intermediaries – that is, internet service providers (ISPs) whose services are used by a third party to infringe copyright or a related right. The Athens First-Instance Court has applied this provision (Decision 4658/2012), ordering ISPs to block access to certain websites offering unauthorised MP3 downloads. The ISPs were not considered liable under the E-commerce Directive, but the injunction was considered adequate and in accordance with the Constitution and copyright legislation.
The IP provisions that apply to bricks-and-mortar stores may also apply to the online offer and sale of counterfeit goods, as this is another form of infringement. Due to the online nature of the infringement, some adaptation is needed – thus, an action may be brought in Greece when a website is run by an entity whose office or warehouse is in Greece. Website owners with warehouse premises often sell not only online, but also from that base.
Rights holders operating in Greece should record their rights through customs intervention requests. Ideally, the rights holder should include detailed information about the distinctiveness of the original products and counterfeit goods, as well as common import and transit routes. It is advisable to also record shape marks and designs, so as to address the separate import of non-banded products and the brands that are destined to be affixed upon them.
It is also advisable to appoint a local contact in Greece, as this can considerably speed up communication and the destruction process.
Rights holders must be vigilant and work closely with the enforcement authorities within the Greek territory by being responsive, supplying information as requested by the authorities, participating in criminal procedures brought by the state and assisting in the destruction process.
A significant trend increasingly experienced in trade in Greece is that counterfeiting occurs more and more online and through social media. Also, such activities increasingly implicate more than one country. This makes it progressively more complicated to locate physical addresses for warehouses where counterfeits are stored and to identify the true operators of these activities. Therefore, it has become more and more important to monitor counterfeiting online and in social media.