Court offers valuable guidance on enforcement of marks with a reputation

The Athens Multi-member Court of First Instance has upheld a civil action by Papadopoulos Biscuits and Food Industry SA, the owner of a figurative trademark representing cylindrical-shaped gaufrettes, seeking a permanent injunction against a Greek entity which manufactured cylindrical-shaped gaufrettes (Decision 526/2011).
Although the Greek Act on Trademarks (2239/1994) does not provide for the registration of three-dimensional (3D) trademarks (nor does the Greek Trademarks Office have the infrastructure to receive 3D trademark applications), the court ruled that the registration of a trademark consisting of the image of the product itself affords full and exclusive protection to the 3D shape of the applicant’s product. A third-party objection based on absolute grounds of refusal ("a sign shall not be registered if it consists exclusively of the shape which results from the nature of the goods or the shape that is necessary to obtain a technical result") is inadmissible before the civil courts of any instance. The court noted that the irrevocable decision of the Examination Committee to accept a trademark for registration is binding on the civil courts.
The court then entered into a detailed analysis of the requirements necessary to grant a greater scope of protection to trademarks with a reputation. A trademark with a reputation is protected where:
  • a similar or identical sign is used without the consent of the proprietor of the earlier trademark;
  • such unauthorised use takes place in the course of trade;
  • the purpose of the use is the distribution of goods and services in the market; and
  • use of the later sign without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of earlier mark.
Following the reasoning of the Court of Justice of the European Union (ECJ) in Adam Opel (C-48/05), the court held that affixing a later sign on a product or its package is considered use related to the distribution of goods and/or services on the market. The court then came to the novel conclusion that, as far as 3D trademarks are concerned, affixing a later sign means manufacturing a product or its package in a similar or identical shape.
In an effort to comply with the ECJ’s decisions in General Motors (C-375/97) and PAGO (C-301/07), the court then ruled that the reputation of a trademark must be assessed in relation to the awareness of the relevant section of the public as regards the goods or services for which the mark was registered. There is no specific quantitative threshold in this regard: a trademark is considered to have a reputation when it is known in a substantial part - but not necessarily the entirety - of the territory of Greece. The court held that all relevant factors must be taken into account, in particular:
  • the market share held by the trademark;
  • the intensity, geographical extent and duration of its use; and
  • the size of the investment made by the mark owner in promoting it.
In view of the ECJ’s findings in L'Oréal (C-487/07) and Intel (C-252/07), the court ruled that a trademark with a reputation is protected against uses that present a certain degree of similarity between that mark and a later mark. Such similarity should lead the relevant section of the public to establish a link between the marks, without necessarily confusing them. A likelihood of confusion between the marks is not necessary: the later mark should only bring the earlier mark to the mind of the average consumer, who is reasonably well informed and reasonably observant and circumspect.

The court further held that the existence of such a link must be assessed globally, taking into account all relevant factors, including:
  • the degree of similarity between the marks;
  • the similarity and nature of the goods or services covered by the marks;
  • the relevant public;
  • the strength of the earlier mark’s reputation;
  • the degree of distinctiveness of the earlier mark;
  • whether the distinctiveness of the earlier mark was inherent or acquired through use; and
  • whether there was a likelihood of confusion among the relevant public.
With regard to the degree of similarity, the court held that the more similar the marks are, the more likely it is that the later mark will bring the earlier mark to the mind of the relevant public. Likewise, the stronger the distinctive character of the earlier mark, the more likely it is that the relevant public will think of the earlier mark when confronted with an identical or similar mark.

The necessary link obviously exists where there is a likelihood of consumer confusion. However, the court clarified that the existence of the link per se does not suffice to find that the earlier mark has been infringed: the proprietor of the earlier mark must also adduce evidence that use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. In this respect, the court seemed to adopt a rule that was as strict as that in Intel. According to the court, the proprietor of the earlier mark must demonstrate actual and present injury to its mark or a grave risk that such injury will occur in the future. The existence or risk of injury must be assessed globally, taking into account all the relevant factors, including:
  • the more immediately the earlier mark is brought to mind by the later mark, the greater the likelihood that current or future use of the later mark is taking unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier mark; and
  • the stronger the distinctive character and reputation of the earlier mark, the easier it will be to find that detriment has been caused.
It is the first time that a Greek court has defined the concept of ‘taking unfair advantage of the distinctive character or repute’ of an earlier mark. In this innovative ruling, the court held that such parasitism takes place where, by reason of the transfer of the image or characteristics of the earlier mark to goods identified by a later mark, there is a clear exploitation of the reputation of the earlier mark. This is especially so where a third party attempts to ride on the coat-tails of the earlier mark so as to benefit from its power of attraction, reputation and prestige, and to exploit, without paying any compensation to the mark owner and without being required to make any efforts of its own, the marketing effort expended by the mark owner in order to create and maintain the mark's reputation.
Papadopoulos alleged that its 3D mark had a reputation among the Greek consumers at large. Moreover, it alleged that the defendant distributed biscuits that were identical to its own cylindrical-shaped gaufrettes. Such use allegedly created consumer confusion, and took unfair advantage of, and was detrimental to, the distinctive character and reputation of Papadopoulos’ earlier mark. Papadopoulos requested that the court issue a permanent injunction preventing the defendant from marketing its goods and an order enjoining the defendant to withdraw its goods from the market.
In response, the defendant contended that:
  • Papadopoulos’ 3D mark was devoid of distinctive character (or, alternatively, that the mark had become generic); and
  • the cylindrical shape of the mark was necessary to designate the nature and purported use of the product.
Even though the court did not find that there was a risk of consumer confusion, it ruled in favour of Papadopoulos, recognising the reputation of its mark among the Greek public and confirming the greater scope of protection afforded to trademarks with reputation. In particular, it ruled that the defendant intended to take unfair advantage without due cause of the repute of Papadopoulos’ earlier mark, and issued an injunction preventing further distribution of the infringing products in the Greek market.
The decision offers valuable guidance to trademark practitioners seeking to apply the rulings of the ECJ in order to enforce trademarks with a reputation in Greece.
Stelios Malliaris, Dontas Law Offices, Athens

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