Tsibanoulis & Partners Law Firm
What has been one of your biggest achievements over the past year?
Winning two precedent-setting cases before the Supreme Court. In both cases, the Supreme Court, for the first time in Greece, dealt with:
- the end of trademark registration immunity, following the respective EU case law; and
- the introduction into Greek trademark law of the accounts for profits alternative remedy of calculating damages, under the implementation of the EU IP Rights Enforcement Directive.
These rulings have introduced a new era in Greek trademark law, leaving behind the long-established traditional approach and embracing a novel and open-minded approach under the new EU stipulations. I am also very proud, as sub-committee chair, of the INTA Europe Sub-committee reviving the pioneer role that the INTA Amicus Committee has traditionally played in Europe, with a record number of submissions before the Court of Justice of the European Union and the EUIPO Grand Board of Appeals during the past 12 months.
How do you work with clients to establish the most cost-effective solutions for their IP needs?
Clients usually run on budgets so it is important to know when these are in place and to accommodate them when possible. If you have doubts as to whether a budget exists, it is better to ask than to make assumptions. All companies worldwide have been affected by the pandemic, so chances are they are going to be more careful with their IP-related spending. Although intellectual property remains a pioneer sector that is critical for every commercial entity, from the smallest to the biggest, it is evident that the current situation has increased the stress and pressures on budgets. It is also important to take into account the fact that global portfolios demand huge amounts for multi-jurisdictional IP matters. This should always be borne in mind; it is not merely one single important matter in this part of the world, but many simultaneous important matters in multiple parts of the world. Open communication always works when the parties involved all want the same thing – to continue good, solid cooperation.
How can brand owners work with external parties such as online platforms and regulatory authorities to better protect their rights online?
This is a tough balancing act in a multifaceted and opposing interest matter, which requires skill from the legislators and the courts to set a fair, safe and effective working environment. The solution that we should be aiming for is a realistic approach that addresses brand owners’ concerns and protects consumers without overly burdening online platforms, involving other external parties. The ultimate goal is to achieve maximum protection for consumers and rights holders without undermining the functioning processes of online platforms, which provide a vital marketplace for brand owners.
What are the biggest enforcement challenges currently facing EU rights holders?
The increase in online transactions during the pandemic has further attracted the attention of online counterfeiters as it has offered a wider environment in which to operate. Therefore, tackling online infringement and enforcement is the biggest challenge, as well as the delays, court closures and suspensions, and changes in practical matters and procedures (eg, telephone or virtual trials and witness examinations) that have occurred almost everywhere in the world. Enforcement never stopped during the pandemic; however, it did adapt to the new reality.
Which upcoming European legislative developments should international rights holders be monitoring?
Rights holders should be monitoring the Digital Services Act package published by the European Commission on 15 December 2020, which includes a proposal for a regulation on a single market for digital services (the Digital Services Act) amending the E-commerce Directive, as well as a proposal for a regulation on contestable and air markets in the digital sector (the Digital Markets Act). This will affect various types of digital service provider (eg, marketplaces, social media platforms and content-sharing platforms), which play a decisive role in IP protection and consequently brand protection. The package aims to provide an open online environment and legal certainty while restricting anti-competitive and unfair practices. The debate is extensive given the diverse interests.
Marina Perraki is a partner at Tsibanoulis & Partners Law Firm and holds a PhD in trademark law from Queen Mary, University of London. She was among the group of experts selected to draft the bill for the implementation of the new EU Trademark Directive in Greece. Dr Perraki is a seasoned litigator with an impressive winning track record. She has practised trademark law for more than 20 years and works mainly with international clients.