Dr Helen G Papaconstantinou and Partners Law Firm
Industrial designs in Greece may be protected at the international, EU and national levels. Registered international designs with Greece as a designated state have the same effect as a valid national registration. Registered Community designs are automatically valid in Greece. Unregistered designs are also protected in Greece under EU law.
Registered industrial designs are protected by:
- Law 2417/1996 on the ratification of the Hague Agreement Concerning the International Deposit of Industrial Designs;
- Presidential Decree 259/1997 on the implementing provisions of the Hague Agreement Concerning the International Deposit of Industrial Designs;
- Presidential Decree 161/2002 implementing the EU Designs Directive (98/71/EC); and
- the EU Community Design Regulation (6/2002).
With regard to national industrial designs, Greece has a ‘partially cumulative’ protection system. According to this doctrine, a registered design is eligible for protection under both copyright and design law, provided that the requirements for each type of right apply. Protection under copyright law also applies independently to unregistered designs, provided that the conditions of Law 2121/1993 on copyright protection are met.
The Greek courts apply the different criteria under the two types of protection on a case-by-case basis (ie, novelty and individual character under design law and originality resulting from the personal contribution of the creator under copyright law). In a case involving an international design registration (recognising the new and individual character of the design in question) that did not designate Greece, the Athens Court of Appeal found that, since the design in question fulfilled the conditions to be considered a creation of exceptional originality, it was eligible for protection in Greece under copyright law (Decision 5863/2008).
Although Greek design law does not provide for the protection of unregistered designs, such designs are protectable under Article 11 of the Community Design Regulation. In order to enjoy the three-year protection available in this context, an unregistered design must:
- be new;
- have individual character; and
- have been disclosed to the public within the European Union.
‘Disclosure’ is understood to mean any public announcement which is made in such a way that specialists in the relevant sector can be informed of it in the normal course of business.
Unregistered designs can also enjoy protection under Greek copyright law, although this requires a considerably higher degree of originality. In this context, a design must exhibit particular individuality which results from the creative intellectual work of the creator and gives the design such originality that it is distinguished from similar creations. The Thessaloniki Appeal Court held that specific seams on clothes, the placement of pockets and the size, shape and placement of buttons lacked individuality and thus were not original; therefore, they were not protectable under copyright law (Decision 2015/2010).
An application for registration of an industrial design can be filed with the Greek Patent Office by the creator or his or her successor in title. If the applicant is not the sole creator or co-creator of the design, the origin of the right to the design must be proven by submission of a related declaration.
Only designs that are new and have individual character can be protected. They must also be susceptible to industrial application (Thessaloniki Court of Appeal Decision 1044/2011). In order for a design to be considered as having individual character, the overall impression that it produces on the informed user must differ from any design disclosed before the filing or priority date. The designer’s degree of freedom in developing the design must be taken into account when assessing individual character.
Protectable as a design is the appearance of the whole or part of a product resulting from the lines, contours, shape, texture or materials of the product itself or its ornamentation. In this context, a ‘product’ is defined as any industrial or handicraft item, including parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.
Designs for spare parts – that is, designs applied to or incorporated into products constituting component parts of a complex product – are eligible for registration only to the extent that:
- the component part, after incorporation into the complex product, remains visible during normal use of the complex product, excluding maintenance, servicing or repair;
- the visible features of the component part are new and have individual character; and
- the design is not dictated solely by its technical function.
As a ‘complex product’ is considered to be a product composed of multiple components that can be replaced and that permit disassembly and reassembly of the product, ‘must-fit’ spare parts are not protectable. Also not protectable are features of a product’s appearance that are dictated solely by its technical function, or that must be reproduced in an exact form and dimensions in order to permit the product into which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product, so that either product may perform its function. In order for a design to be eligible for registration, it must also not be contrary to public policy or to accepted principles of morality.
An important aspect of the protection of registered designs is the 12-month grace period for designs that have been disclosed by the designer, his or her successor in title or a third party. Due to the particular character of designs within the market, this grace period can prove valuable to creators, who have the opportunity to evaluate the impact of their design on the market before registering it.
In order to register an industrial design in Greece, an electronic application must be filed with the Greek Patent Office which includes:
- a request for registration;
- details of the applicant and the creator;
- a graphic representation or original photograph of the design (with a maximum size of 16 centimetres by 16 centimetres);
- an indication of the product into which the design will be incorporated or used;
- the relevant Locarno class of the product;
- priority documents, if convention priority is claimed;
- any applicable documentation regarding succession, which must be notarised and legalised by apostille;
- a certified copy of an extract from the Register of Commerce reflecting the incorporation of the applicant company, legalised by apostille;
- a power of attorney, signed by the applicant, if the filing is made by an authorised agent; and
- payment of relevant fees.
Priority must be claimed within six months of the date of first filing.
Multiple applications are permissible, provided that the number of designs included does not exceed 50 and all designs belong to the same class. Deferment of publication of up to one year is possible on payment of a €30 fee.
The €130 fee for a single design covers the application, publication and first five-year protection term, making design registration an affordable and attractive option.
The maximum protection term for designs is 25 years, renewable every five years.
The Greek Patent Office assesses only the formalities of design applications. Any missing documents or details may be submitted within four months of application. After this term, the design is published in the Official Bulletin of the Greek Patent Office.
Greek law does not provide for an opposition procedure.
The lack of substantive examination by the Greek Patent Office is offset by the possibility of having a design declared invalid (Thessaloniki Court of Appeal Decision 1044/2011). A design can be declared invalid by the competent civil court if:
- the registered rights holder is not the creator, his or her successor in title or the owner of the design;
- the protected design does not fulfil the registration requirements provided by law;
- the features of the appearance of the product or of its interconnection are not protectable because:
- they are dictated solely by its technical function; or
- they must be reproduced in an exact form and dimensions in order to permit the product into which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function; or
- its exploitation or publication contravenes public policy or accepted principles of morality.
The most common way to commence an infringement case is by sending a warning letter before initiating court proceedings. This has proven to be an effective method, since Greek infringers often cease infringement on receipt of a strongly worded cease and desist letter.
Pursuant to Articles 178 to 206 of Law 4512/2018, which was published in the Official Gazette of the Hellenic Republic (17 January 2018), from 17 October 2018 mediation will be compulsory in legal disputes that arise from patent, trademark and industrial design infringements. It remains to be seen how the new rules will be applied and how this new practice will affect IP litigation. In a recent decision, the Administrative Plenary of the Greek Supreme Court (Areios Pagos) ruled that compulsory mediation in civil disputes is unconstitutional according to the requirements of the Hellenic Constitution.
Rights holders and their exclusive licensees are entitled to bring infringement actions before the competent courts. In cases of co-ownership, infringement actions can be brought independently by each co-owner.
Although changes to the Law on Civil Court Proceedings recently entered into force with the aim of simplifying and accelerating proceedings, main proceedings still experience significant delays. This makes it indispensable for the rights holder to consider filing for preliminary proceedings – in particular, temporary restraining orders and injunctions.
The quickest way to halt infringement is to file a temporary restraining order. In order for the court to grant a restraining order, the petitioner must prove the existence of a prima facie serious infringement and the exceptional urgency of the matter; the element of urgency in particular must be evident for the grant of an injunction. The related request must be made at the same time as a petition for injunction. A granted temporary restraining order remains in effect until the hearing on the injunction takes place.
Within the framework of an injunction proceeding, the rights holder can request:
- cessation of the infringement;
- removal of the allegedly infringing products from the market; and
- disclosure of detailed information and accounts concerning the defendant’s infringing activities.
The implementation of the EU IP Rights Enforcement Directive (2004/48/EC) established the right of rights holders to request preservation of evidence, inspection and compensation for damages.
As a next step, rights holders can initiate an action on the merits, which becomes statute barred either:
- five years after the date on which the rights holder became aware of the infringement or damage and the identity of the infringing party; or
- 20 years after the date on which the infringement was first committed.
If the design infringement is proved to have been intentional, the rights holder may seek one of the following forms of monetary compensation:
- compensation for damages, which includes actual loss, lost profits and moral damages;
- an account of profits; or
- payment of hypothetical lost royalties that the infringer would have paid to the rights holder had a licence agreement been in place. In this case, the plaintiff must submit evidence to justify the requested amount.
The court can also order destruction of the infringing products.
The law does not provide for punitive damages.
By virtue of the Law on Patent Protection (which applies to designs by analogy), any party that affixes to the following a false statement that the products in question are protected by an industrial design certificate will be subject to up to a one-year prison term, a fine or both:
- the products themselves;
- the products’ wrapping or packaging;
- any relevant commercial document intended for the public; or
- any other relevant published or advertising material.
Greece has two specialised EU (formerly Community) trademark and patent courts, based in Athens and Thessaloniki. These courts have exclusive jurisdiction over design infringement cases and copyright disputes under the conditions established by the applicable legislation. Judges serving these courts receive special training in IP matters during their studies at the National School of Judges before their appointment to the bench.
Despite the effective protection provided by the courts, it is paramount that rights holders adopt preventive strategies and efficient monitoring systems. Inspired by the simplified procedure of the regulation (EU) 608/2013, Law 4155/2013 provides for a straightforward, effective process with respect to the seizure and immediate destruction of infringing goods located within the Greek territory. These actions may be implemented by a number of agencies, including:
- the police;
- the Market Control Unit;
- the Financial and Economic Crime Unit; and
- the Coast Guard.
The law allows for expedited and even on-the-spot destruction of infringing goods, with the infringer’s consent.
Ownership changes and rights transfers
In order for assignments of rights and any other changes (eg, name or address changes and licence agreements) to have legal effect, they must be recorded with the Greek Patent Office. Recordals can be made both while a design application is pending and after registration.
For recordal of an assignment, the following must be submitted:
- an assignment deed signed by both assignor and assignee, which must be notarised and legalised by apostille; and
- a power of attorney, simply signed by the assignee.
For recordal of changes of name, legal style or address, the following must be submitted:
- an extract from the Register of Commerce or any other official certificate issued by a competent authority reflecting the change, which must be legalised by apostille; and
- a power of attorney, simply signed by the rights holder.
For recordal of a licence, the following must be submitted:
- a licence agreement signed by both the licensor and licensee, which must be notarised and legalised by apostille; and
- a power of attorney, simply signed by the licensee.
It is recommended that the new rights holder record the assignment in the register in order to invoke the rights deriving from the design in case of infringement.
The protection provided under design, copyright and trademark law overlaps. Each type of protection covers different aspects of an IP right, while the conditions of protection and granted rights also differ. Therefore, in the context of related decision making, the comparative advantages and disadvantages of these rights must be assessed. The protection offered by each type of right often complements that of the other rights.
Design protection may also fall under the realm of unfair competition law and benefit from provisions pertaining to unregistered distinctive signs. In light of the above, it is crucial that rights holders undertake a comprehensive evaluation of their IP portfolio with the assistance of an IP expert. In doing so, they can strategically combine the protection options offered, leading to the most effective management of their IP rights.