Trademark's reputation may not need to be substantiated by concrete evidence

The Supreme Administrative Court has issued its ruling in a final appeal filed by the applicant for the trademark INO KARELIA (Decision No 2370/2012). The Supreme Court held that the Administrative Court of Appeals had not erred in law in finding that the series of earlier KARELIA trademarks enjoyed a reputation in Greece based merely on the judges’ own perceptions and knowledge of the widespread and long-standing use of the marks in association with Class 34 goods. Such reputation was a well-known and commonly accepted fact that did not need to be substantiated by concrete evidence under Article 144(2) of the Administrative Procedure Code.

The trademark application at issue, INO KARELIA, was filed in association with goods and services in Classes 1 to 42. It consisted of the real name of the applicant, a member of the Karelia family, which has been involved in the cigarette manufacturing industry for over 80 years.

Under Article 5 of the Greek Act on Trademarks (2239/1994):

“if a trademark application consists of the name of the applicant, and the same has already been filed as a trademark in association with identical or similar products, an additional distinctive element should be added to the later application to distinguish it from the earlier trademark”.

The Supreme Court found that the above provision did not infringe the applicant’s constitutionally protected right to the free development of her personality, as provided for in Article 5 of the Greek Constitution. In essence, the Supreme Court held that an earlier registered trademark sets a lawful limitation to the scope of Article 5 of the Constitution. This is a remarkable and innovative conclusion by the court.

In particular, the Supreme Court quoted two excerpts of rulings by the European General Court, namely Paragraph 45 of Case T-185/03 and Paragraph 49 of Case T-40/03, in which it was held that, even where trademarks consisting, all or in part, of personal names are concerned, the assessment of the likelihood of confusion must be made according to the same principles as those applying to any other signs.

Based on the above, the Supreme Court held that the Court of Appeals had not erred in finding that the first name of the applicant (ie, Ino) in the trademark application at issue was not sufficiently distinctive to eliminate the risk of confusion with the series of earlier KARELIA marks, which were registered in association with Class 34 goods. The KARELIA marks were composite signs consisting of:

• the dominant and distinctive element 'Karelia'; and
• non-distinctive, secondary elements of a descriptive nature, such as 'Slim' and 'Lights'.

Moreover, the Supreme Court held that the Court of Appeals had not erred in finding that the reputation of the earlier KARELIA marks afforded them a greater scope of protection (ie, protection against similar trademarks filed in association with dissimilar goods and/or services) and in rejecting the trademark application for INO KARELIA for goods and services other than those related to Class 34.

This decision of the Supreme Court marks an interesting development in Greek trademark law, as it recognises that trademarks with a reputation benefit from a greater scope of protection, even where such reputation has not been substantiated by concrete evidence.

This development would make it easier for owners of brands that are generally perceived as enjoying a reputation among consumers to enforce their rights, even where there is no specific quantitative evidence (ie, market shares, sales figures, advertising expenditure and extent of use) substantiating the brand owners’ claims. Arguably, this decision will prove to be of immense importance for the protection in Greece of trademarks that are not used domestically.

Stelios Malliaris, Dontas Law Offices, Athens