28 Jan
2019

Litigation procedures and strategies: Greece

Tsibanoulis & Partners Law Firm

Legislative framework and causes of action

Trademark law, rules and regulations

Trademarks in Greece are regulated by Law 4072/2012, which implements the EU Trademark Directive (2008/95) and the EU Enforcement of Intellectual Property Rights Directive (2004/48). The new EU Trademark Directive (2015/2436) is currently being implemented through a new law that will replace Law 4072/2012.

Unregistered marks are protected in Greece under unfair competition law provisions, namely Law 146/1914. EU trademarks – protected throughout the European Union (including Greece) – are regulated by EU Regulation 2017/1001, which is directly applicable in Greece.

Greece has also ratified the following international laws:

  • the Paris Convention for the Protection of Industrial Property (through Law 213/1975);
  • the Madrid Protocol Concerning the International Registration of Trademarks (through Law 2783/2000); and
  • the Nice Agreement on the Classification of Goods and Services (through Law 2505/1997).

Causes of action

The owner of a registered trademark may rely on its exclusive right to bring action against infringers. The law states that a trademark owner can:

  • use the trademark;
  • affix the trademark on goods;
  • characterise services;
  • affix the trademark on covers and packaging of the goods, writing paper, invoices, price lists, notices, advertisements and any other printed material, electronic or audiovisual media; and
  • affix the trademark on goods or packaging intended exclusively for export.

The owner of a registered trademark may respectively prohibit any third party from doing any of the above, to the extent that:

  • the sign used by the third party and the goods or services at issue are identical with those of the trademark owner;
  • risk of confusion is created; or
  • risk of dilution is created.

The trademark owner may also prohibit:

  • the transit of infringing or counterfeit goods through Greece;
  • the affixing of the trademark on genuine products that the trademark owner intended to be anonymous; and
  • the removal of the trademark from genuine products and their sale with a different brand or without any brand.

Alternative dispute resolution

Mediation and arbitration

By virtue of Law 4512/2018 (published on 17 January 2018), all disputes concerning trademarks initiated before civil courts are subject to compulsory mediation. Hearing of the cases will be inadmissible if the mediation process stipulated in the law has not been followed. The provision will enter into force on 17 September 2019 (following a vote on an amendment of the law which provided initial entry into force of the provision on 17 October 2018). According to the new provisions, plaintiffs must submit a request for the appointment of a mediator from the list of mediators available on the Ministry of Justice website and invite the other party to arrange mediation within 15 days following the invitation. The mediation should not exceed 24 hours, unless otherwise agreed by the parties. It must be completed within 30 days following the initial invitation, and may, by mutual agreement, be extended a further 30 days. Physical presence is not required, and mediation can be conducted via teleconference. During mediation proceedings, the parties are present together with their attorneys. At this first meeting, the parties may decide that they do not wish to engage in the mediation process. This suffices for the purposes of admissibility regarding the hearing. If the parties reach an agreement, the respective minutes, including the settlement agreement, may be submitted to the court secretariat for certification and become an enforcement title. Interim measures are not precluded pending mediation proceedings.

By virtue of Article 867 of the Greek Civil Procedure Code, private disputes can be submitted to arbitration on agreement between the parties and to the extent that the parties may dispose of the object of the dispute. Therefore, the above points do not apply to matters falling within the administrative process of trademark rights acquisition or cancellation. Arbitration can, for example, be agreed between parties in case of disputes arising from trademark licensing agreements.

Litigation venue and formats

Court system and litigation venues explained

A bifurcated system exists in Greece. The Trademark Office and the administrative courts are exclusively competent for all matters related to the existence and cancellation of marks, including oppositions and invalidity actions. The civil courts are exclusively competent for infringement matters.

The civil court system consists of the first-instance civil courts (in various cities around Greece), the civil courts of appeal (mainly in Athens, Piraeus, Thessaloniki, Larissa, Patra and Herakleion) and the Supreme Court (Areios Pagos). The administrative court system consists of the First-Instance Administrative Court, the Administrative Court of Appeal and the Administrative Supreme Court. Both the administrative and the civil Supreme Court are based in Athens. All administrative judicial proceedings also take place in Athens. In Greece, most cases are appealed at second instance on matters of fact and law. Several appeal rulings are also challenged before the Supreme Court on matters of law.

Disputes arising from the infringement of EU trademarks are brought before the exclusively competent special departments within the courts of Athens and Thessaloniki. It is standard in trademark infringement disputes to combine trademark infringement claims with unfair competition and tort claims. If claims are based on trademark infringement they may be brought before a single-member court. If combined with unfair competition, they will be brought before a multi-member court.

According to the Civil Procedure Code, after filing the lawsuit the parties must submit their pleadings and evidence supporting their arguments within 100 days (or 130 days for parties residing abroad). Witness affidavits should also be produced. The plaintiff must serve the lawsuit to the defendant within 30 days (or 60 days if the defendant resides abroad or the defendant’s address is unknown). Rebutting of the other side’s arguments will be submitted in writing within 15 days of the expiry of the 100 (or 130) day period. When the file closes, a hearing date is set. Following a typical hearing – where only in exceptional circumstances will a witness examination take place – a ruling is rendered within a few months.

Forum shopping

For national civil disputes, plaintiffs may choose between the court competent on the basis of the defendant’s place of seat or residence and the court competent on the basis of tort – namely, where the infringement took place.

For cross-border disputes, the relevant Greek Civil Procedure, EU or international legal texts apply, providing for the available venues from which the plaintiff can choose.

Jury versus bench

In Greece, trademark disputes are heard in bench trials. There is no provision for jury trials.

Damages and remedies

Available remedies

In the main civil procedure (permanent injunction), the following remedies are available:

  • ceasing the infringing activity;
  • refraining from future infringing activity;
  • withdrawing the products bearing the infringing sign;
  • destroying or confiscating the infringing goods;
  • a threat of penalties (in the form of monetary fines and personal incarceration) should the defendant fail to comply with the above;
  • damages;
  • moral damages; and
  • the publication of a summary of the ruling in the press and/or online.

Damages and moral damages may be claimed if the infringement was intentional or due to negligence. Greek trademark law implementing the enforcement directive provides for three alternative possibilities of a damages claim. The trademark owner may claim:

  • actual damage suffered (including lost profits);
  • the licence fees that would be requested if a licence agreement existed; or
  • the amount that the infringer profited from the exploitation of the mark.

Intentional infringement of a trademark is a criminal offence. Criminal prosecution is initiated on filing a criminal complaint by the trademark owner. Criminal penalties include at least six months’ imprisonment and a minimum fine of €6,000. In case of counterfeit products, when particularly high profits result or damages occur on a commercial or professional scale, stricter penalties apply (ie, a minimum of two years’ imprisonment and a fine between €6,000 and €30,000). General provisions of the Penal Code (with respect to forgery under Article 216) and fraud (Article 386) may also be applicable in cases of trademark infringement and counterfeiting.

Injunctive relief

Trademark owners may seek injunctive relief by:

  • filing a preliminary injunction petition requesting temporary measures (eg, temporarily cease and desist from producing, manufacturing, offering for sale, exporting, advertising and generally commercialising the infringing goods);
  • delivery of information on sales figures and networks or channels of distribution of the infringing products (eg, orders and invoices to end-consumers or retailers); or
  • temporary confiscation of the infringing goods.

The issue of urgency in the petition is critical. If no urgency is established the petition will be dismissed for formal reasons. It is therefore relevant when the trademark owner first discovered the infringement. The hearing is normally scheduled within three to four months of the filing date, and the relevant court decision is issued within the following three to five months.

Given the application of normally available civil procedures to disputes arising from trademark infringement, civil courts may order any type of interim measure or remedy that is suitable for the protection and preservation of the right or legal relationship until the issue of the judgment on the main trial, as long as the enforcement of such order does not satisfy what would have been the main claim, namely leading to an award of the full exercise of the right or legal interest to the applicant party.

Injunctive relief is granted on the following conditions:

  • the claim will be probably substantiated;
  • the infringement is current or imminent and constitutes a threat to the owner’s rights; and
  • an urgent need for court regulation of the matter exists.

The preliminary measures that the court may impose on the infringing party include:

  • a temporary cease of the infringement (eg, illegal use, reproduction and distribution of the infringing products) and temporary withdrawal of the infringing products from the market;
  • drawing up a detailed inventory of the infringing items in the possession of the infringing party or temporary confiscation and placement under custody of the items;
  • the audit of the commercial records and books for gathering data on the infringing items produced or marketed;
  • the threat of penalties (in the form of monetary fines and personal incarceration) in case of contempt of the decision and for each violation of the decision’s provisions; and
  • publication of the respective injunction order in the press or online.

On filing the petition, the trademark owner may also request that a judge grant a temporary order. This is available only in cases of extreme urgency. The judge may invite the respondents to appear at the hearing, which is usually the case even though ex parte proceedings are also a possibility provided by law.

Evidencing the case

Investigations and first steps

Before the commencement of the judicial proceedings it is recommended to have in place all evidence that the plaintiff will use to substantiate the claim. Lawsuits in Greece must be precise and refer to all points of fact that will be under judicial review. No supplementing of the facts is allowed subsequent to filing. As a first step, a test purchase of the goods at issue is usually recommended.

Further, the trademark owner may request, through a law suit or interim measures petition, the delivery of information by the infringer on sales figures and networks or channels of distribution of the infringing products (eg, orders and invoices to end-consumers or retailers). The same may be requested by a third party contributing to the infringement, to the extent that:

  • the third party was found to possess infringing products, or was using or providing infringing services on a commercial scale; or
  • the third party was actively involved in the production, manufacture or distribution of infringing goods or in the provision of infringing services.

To the extent that a trademark owner has produced evidence to support its infringement claim, and also claims that evidence is in the hands of the defendant, it may request the court to order the defendant to provide such evidence.

In cases of infringement on a commercial scale, the court may also order the defendant to submit bank, financial or commercial books and records.

Survey evidence

Surveys are used in Greece but they are of low probative value because they are easily rebutted by the other side, mainly on grounds of subjectivity and lack of independence. They may constitute evidence of a trademark’s establishment in the market, repute and extent of use. Occasionally, surveys may be used for strengthening the risk of confusion allegations.

Use of expert witnesses

Expert witnesses are provided in the Civil Procedure Code. It is unlikely that a court will appoint such an expert witness. However, trademark owners may use expert witnesses (eg, by providing expert witness affidavits) to support their claims.

Available defences

In civil law cases, the defendant may invoke the following defences:

  • no likelihood of confusion or dilution between marks;
  • the sign is used in a descriptive way rather than as a trademark;
  • own name defence;
  • use in order to denote the purpose and context of spare parts;
  • use of a right of mere local significance;
  • acquiescence by the owner of the earlier mark, to the extent the trademark owner knew of the infringing use for more than five years and knowingly took no action against it, unless the later mark was used in bad faith;
  • limitation of a trademark right;
  • exhaustion of a trademark right; and
  • prescription.

The defendant may not invoke the invalidity of the trademark rights of the plaintiff. The defendant may only file separate proceedings before the trademark office (appealed before the administrative courts) for an invalidation of the mark.

Until recently, the defendant could also invoke the fact that the infringing sign used was actually a registered trademark in the defendant’s name. However, following recent European Court of Justice (ECJ) case law, the Greek courts have now started to dismiss such a defence. This ECJ case law is crystallised in the new EU Trademark Directive and will therefore soon become national law on implementation of the directive.

In the context of the administrative proceedings (opposition or invalidity), if the grace period for non-use of the registered mark has expired, the defendant can request the trademark owner to prove that it has put its trademark to genuine use within the relevant period.

Appeals process

Any party participating in the first-instance proceedings based on an ordinary lawsuit can file an appeal according to the following timeframe:

  • within 30 days of the decision being served, if the party resides in Greece;
  • within 60 days of the decision being delivered, if the party resides abroad; and
  • within two years of the issuance of the decision, in case the decision has not been served.

Injunctive relief decisions and temporary restraining orders are not subject to appeal.

Tsibanoulis & Partners Law Firm

18 Omirou str

Athens 106 72

Greece

Tel +30 210 36 75 100

Fax +30 210 36 75 164

Web http://www.tsibanoulis.gr

Marina Perraki

Partner

[email protected]

Marina Perraki is a partner at Tsibanoulis & Partners Law Firm and has a PhD in trademark law from Queen Mary University of London. Dr Perraki is one of the selected experts drafting the new bill for the implementation of the new EU Trademark Directive in Greece. She is a seasoned litigator with an impressive track record. For more than 19 years she has worked in trademark law, mainly with international clients across a range of sectors including cosmetics, plant protection, beverages, apparel, financial services and publishing. Dr Perraki is a commercial mediator and the only Greece-based World Intellectual Property Organisation panellist for Uniform Domain-Name Dispute-Resolution Policy and ‘.eu’ disputes. She formerly chaired the INTA Famous and Well-Known Marks European Committee and is currently a member of the INTA Amicus Committee.