Long-awaited new Trademark Law is enacted
The long-awaited new Trademark Law was enacted on April 10 2012. The new law implements the basic provisions of the IP Rights Enforcement Directive (2004/48/EC) and aims to modernise trademark registration in Greece.
The most important provisions of the new law may be summarised as follows:
- E-filing - following the setting up of appropriate infrastructure, the Trademarks Registry should be fully computerised with regard to the filing of new trademark applications. The complete electronic file for each new trademark application, including all relevant documents, should become available online.
- Direct filing - within the next six months, applicants will be allowed to file trademark applications directly with the Trademarks Office. Applicants must, however, designate a local agent authorised to accept service of documents. The agent does not need to be an attorney.
- Speedy registration - trademark applications will be examined by an officer of the Trademarks Office, rather than the Trademarks Administrative Committee. The examiner will carry out an examination on absolute and relative grounds of refusal, and issue binding decisions accepting or refusing the applications, including international registrations designating Greece. If no grounds of refusal apply, the trademark must be registered within a month of filing.
- Letters of consent - a letter of consent to the registration and use of later trademarks can now be submitted to the administrative courts pending the acceptance of the application. A special hearing for the examination and approval of the letter of consent by the Trademarks Administrative Committee is no longer required.
- Trademarks Administrative Committee - foreign entities may challenge before the Trademarks Administrative Committee a decision of the examiner rejecting an application within 90 days of the notification of the decision.
- Opposition deadline - the deadline to file an opposition before the Trademarks Administrative Committee is three months from the date of publication on the Trademarks Office's website of the examiner's decision accepting the application.
- Proof of use - on request by the applicant, the opponent must prove that:
- the prior trademark(s) relied upon in the opposition have been put to genuine use within the five-year period preceding the filing of the opposition; or
- non-use was due to reasonable causes, provided that, by that date, the prior mark(s) had been registered for more than five years.
- New acts recognised as infringing - the new law explicitly recognises that the following acts constitute infringement:
- the transit of counterfeit goods destined to another country through the Greek territory;
- importing counterfeit goods into Greece with the intention of re-exporting them (at a later stage);
- affixing a trademark on authentic goods that the trademark owner intended to sell unbranded; and
- removing a trademark from authentic goods and replacing it by another mark, or selling authentic goods unbranded.
These acts are considered to be not only civil law torts, but also criminal offences.
- Tolerance - trademark rights are now subject to limitation as a result of acquiescence for a period of five successive years. In such cases, the earlier and later marks must co-exist. However, the concept of 'tolerance' does not apply when the later mark was filed in bad faith.
- Discovery - the trademark owner may require the disclosure of information regarding the extent of the infringement, including:
- banking, financial or commercial documents under the control of the infringers;
- the names and addresses of the manufacturers, distributors, suppliers and previous possessors, as well as of the intended recipients, wholesalers and retailers of the infringing goods or services; and
- the quantities manufactured, delivered, received or ordered and the price of the goods or services.
- Enhanced interim relief - in case of infringements committed on a commercial scale, if the trademark owner demonstrates that there are circumstances likely to endanger the recovery of damages, the court may now order, even ex parte (i) the provisional seizure of the infringer’s assets and the freezing of its bank accounts and (ii) the immediate disclosure of the infringer’s bank, financial or commercial documents, or appropriate access to the relevant information. These remedies are available only after the trademark owner has filed a main action for damages against the infringer.
- Intermediaries’ liability - the abovementioned corrective and provisional measures may now also be ordered against an intermediary whose services are being used by a third party to infringe a trademark.
- Quantification of damages - a quantification rule for calculating material damages has been introduced. In particular, damages may now be calculated on the basis of the amount of royalties or other fees which the infringer would have paid if it had requested a licence to use the trademark. The court may also take into consideration the negative economic consequences, including lost profits, that the trademark owner has suffered, as well as any profits made by the infringer.
- Unjust enrichment - the infringer may be ordered to pay to the trademark owner the profits derived from the infringement, even when the infringer acted without malicious intent or negligence.
- More severe criminal sanctions - the minimum penalty for trademark infringement is now six months' imprisonment and a fine of at least €6,000. In case of counterfeiting carried out in a professional manner or on a commercial scale, and provided that the profit sought by the counterfeiter was particularly high, the minimum penalty is two years' imprisonment and a fine ranging from €6,000 to €30,000.
- Publicity of court decisions - decisions issued by the civil or criminal courts in trademark infringement cases may be published, in whole or in part, in the press or on the internet at the expense of the infringer.
- 'Made in Greece' - a new type of certification mark, the 'trademark for Greek products and services', has been introduced. The criteria for granting a ‘made in Greece’ mark will be determined by subsequent legislation on the basis of the place of production of the goods, the origin of the main ingredients and the production costs.
Dontas Law Offices, Athens
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10