Tackling counterfeit products has been a persistent and vexatious issue in the Greek market, which, due to its geographic position, deals with a sheer volume of counterfeit goods being imported to its territory. While the problem has been predominantly prevalent in physical markets, the expansion of e-commerce and, recently, the changes in consumer behavior brought upon by the pandemic, have affected counterfeit activities in online marketplaces.
Indeed, a great number of counterfeits is sold through major online platforms, including Facebook marketplace, Instagram and eBay, yet there is an increasing rise in the sale of counterfeits in Greek-based online stores. According to the data provided by the Interdepartmental Unit for Market Surveillance (“IUMS”, in Greek “DIMEA”), from April 2021 to date, more than 230 infringements have been detected regarding 225,100 counterfeit products and, as a result, 24 websites have been taken down.
Given the structure of the Greek market and the limited number of well-established domestic online marketplaces operating in the country, it should be noted, at the outset, that none of them can be characterized as notorious, in the sense that the majority or a significant number of the products advertised and sold there are fake. Most of domestic online marketplaces, adopt and implement best practices to eliminate and prevent counterfeit products from being advertised and/or sold through their platforms. Nevertheless, due to the large number of online shops using the services offered by online marketplaces and the wide range of products sold there, there have been instances where counterfeits were spotted. The most well-known marketplaces in Greece include www.skroutz.gr, www.bestprice.gr, www.aboutyou.gr, www.xe.gr.
On the other hand, there are no domestic social media platforms / applications widely used by Greek consumers, therefore, brand owners should focus on well-known foreign social media like Facebook marketplace and Instagram.
Legal framework
In brief, the Greek legislation covers the sale of counterfeits occurring online and provides for a number of remedies available to rightsholders. The main legal instrument, Trademark Law 4679/2020, stipulates the rights of owners of registered marks and sets forth the conditions for the protection against counterfeit infringements, including civil claims for cease and desist under threat of monetary penalty, removal or destruction of counterfeit products, preliminary injunction, securing evidence, indemnification and moral damages. Said law further provides for criminal provisions in relation to trademark infringements. Moreover, holders of unregistered marks are afforded protection under the Unfair Competition Law 146/1914 which prohibits the unauthorised use by an undertaking of a competitor’s distinctives signs, namely trade names, company names, distinctive titles and unregistered trademarks. The legal framework safeguarding IP rightsholders against the import of and the ensuing sale of counterfeits in online marketplaces is further complemented by Regulation 608/2013 on the customs enforcement of IP rights and Law 3377/2005 regulating the seizure and destruction of counterfeits by the competent public bodies. In particular, extensive enforcement powers are granted to IUMS, which, besides the imposition of fines, the seizure and destruction of counterfeit products, may indicate the sites to be taken down for illegal sale or distribution of goods, by virtue of Presidential Decree 5/2022.
As far as actions against the intermediary operator of an online marketplace are concerned, the latter can incur indemnification liability under the strict conditions set out in Presidential Decree 131/2003, transposing EU Directive 2000/31 (“e-Commerce Directive”) in the Greek legal order. According to said law, the liability of the intermediary is in principle excluded, unless the latter has actual knowledge of the illegal activity or information and, upon obtaining such knowledge or awareness, does not act expeditiously to remove or to disable access to the above information. As it has been upheld by the CJEU in L’Oreal & others v EBay International (12 July 2011, Case C-324/09), online marketplaces fall under the scope of said Directive and their liability is established according to the conditions set out therein. Nonetheless, cease and desist claims by means of preliminary injunction as well as claims for removal of counterfeit products may also be brought against intermediaries regardless of their actual knowledge of the illegal activity.
It is noted that the above framework regulating the liability of intermediary operators is about to be significantly amended by the much-anticipated Digital Services Act (‘DSA’), expected to enter into force in the first trimester of 2024. Its aim is to reinforce the EU’s legal framework for illegal content on intermediaries, in particular by modernising the above-mentioned e-Commerce Directive. The new regime encompasses, inter alia, a number of measures to counter illegal goods and provides for obligations of intermediaries depending on their role and size, such as the establishment of a structured notice and action mechanism and the obligation on traceability of business users in online marketplaces. It is expected that the new rules will provide for timely, diligent and objective processing of notices and establish robust safeguards for the protection of IP rights in online marketplaces.
Finally, an initial mediation session is compulsory for most disputes brought before Civil Courts in Greece offering, particularly in IP infringement cases, a genuine opportunity to the parties to settle the case extrajudicially. Mediation proceedings are confidential and the minutes, if an agreement is reached, constitute an enforceable deed.
Strategy
Once counterfeit goods are identified in online marketplaces, rightsholders have a range of legal remedies available, encompassing civil actions, penal prosecution and administrative sanctions, to counter infringing activities and safeguard their exclusive rights. The choice of means depends on the particularity of each case and the desired outcome sought by the brand owner. While usually a full-scale strategy may be the most effective approach for ceasing infringements of IP rights online, a targeted approach may be more efficient where timely action is essential. Depending on the nature of the infringement and the internal procedures applied by the online marketplace, a simple extrajudicial notice may be sufficient to remove products that blatantly infringe IP rights. In case this does not bring any result, preliminary injunction with a cease-and-desist request under a provisional order, is usually the following step. In any event, establishing close collaboration with the competent authorities is considered crucial to secure evidence by identifying the infringer and seizing the counterfeit goods.
In deciding the legal strategy for the protection of IP rights, brand owners should take note of the various challenges which may complicate or even impede the satisfactory tackling of infringing activities. Besides the inherent difficulties characterising online anti-counterfeiting enforcement, namely anonymity of the infringer and the strenuous process of locating their premises, delay of justice is a tenacious problem in Greece often frustrating the efficacy of the actions sought. Also, the fact that IP courts, in principle, do not try preliminary injunctions requests and the issuance of judgments on said requests from non-specialized judges can take significant time, even up to 8-10 months, poses additional obstacles to the effective enforcement against online counterfeiting activities.
In relation to infringements of EU trademarks, owners of said trademarks can avail of the more favorable territorial jurisdiction provided for EU trademarks disputes and bring civil actions before the EU (IP) trademarks courts in Athens or Thessaloniki irrespective of the defendants’ domicile. This significantly reduces costs and further ensures that the above cases will be tried by an experienced panel of judges of IP Courts. Hence, owning an EU trademark registration may expediate anti-counterfeit enforcement and help their owners reach a positive outcome.
Costs
Given the multitude of available options and their combination, it is difficult to determine costs in advance. Statutory legal fees are very low, however, the actual fees are much higher and widely range among practitioners, depending on the degree of their specialisation and level of seniority. In addition to lawyer’s fees, costs for court bailiffs’ fees, sworn statements, mediator’s fees and judicial stamp (approx. 1% of the amount claimed) should be included in the brand owner’s budget. Legal expenses awarded by the Courts, typically correspond to only a fraction of the actual costs.
Contact us and learn further information on how to optimally identify and develop your anti-counterfeit strategy in Greece.
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