• Trademark law brings Greek national law in line with EU Trademark Directive
• Ambiguity over how six-month grace period will allow for valid copy marks
• Additional questions over grace periods with new rules on class of goods and services
A new trademark law has been introduced in Greece. Trademark Law 4679/2020 brings the country’s national system into full compliance with the EU Trademark Directive 2015/2436 and is harmonised with EU Regulation 2017/1001. Despite this new consistency with the European Union, Greek trademark professionals have expressed concern over the implementation of some of the law’s provisions, specically on hybrid jurisdictions and renewal periods.
Some of the major changes introduced by the law, enacted on 20 March, include:
•the introduction of certication marks
•the removal of the requirement for graphical representation in applications; a request for transfer of a mark no longer requiring authorisation by a representative/attorney
•defendants’ ability to claim non-genuine use as a defence in infringement proceedings
•the national trademark oce being competent to oversee mediation proceedings, meaning that parties can opt for mediation in proceedings before the Trademarks Administrative Committee
•and the threshold of monetary penalty for violation of a court decision being raised from €10,000 to €100,000.
On the latter, Konstantinos Logaras of Logaras & Associates reects: “This may provide a solution in the cases of recidivist infringers, where the previous threshold was too low to prevent them from new infringements and, at the same time, too high for certain courts in enforcement proceedings to order that the monetary penalty should apply (and multiplied) for each counterfeit product seized in the possession of the recidivist infringer.”
There are, however, questions hanging around the implementation of some of the stipulations of the new law. One of the more impactful of the changes is the creation of a hybrid jurisdiction between the administrative authorities/courts and civil courts. Since 1938, the trademark oce and administrative courts were competent for oppositions, cancellation and invalidity actions, while the civil courts were competent for infringement actions. The new law “breaks this”, says Dr Marina Perraki, a partner at Tsibanoulis & Partners.
The law states that appeals against invalidity and revocation actions will now be heard by the civil courts. Perraki explains that “the new procedure is unusual for Greek standards. The ‘natural’ judge to hear an administrative law case is the administrative court judge”. This will rst and foremost affect the work of the Greek civil court judges, who are not experienced in delivering judgments on absolute grounds: “It is expected that until a settled case law starts to form, many things will remain unclear to practitioners but also to the courts.”
Another ambiguity of the new law is a change relating to the six-month grace period that trademark owners have to renew their marks after a 10-year term has elapsed. While the six- month grace period itself has not changed, the rights of third parties ling marks within that period have. Now, third-party rights acquired in the meantime will not be overturned by a renewal. Perraki notes: “This raises concerns as there can be instances where a trademark was led despite the existence of a prior blocking mark, when the prior mark is within the grace period and the later mark – against the priority principle – will be considered validly acquired.”
This could lead to a slew of oppositions. Perraki points out that all of these provisions only protect good-faith posterior owners. “However, such good faith would be hard to be conceived when it is expressly provided in the law that a mark can still be extended (and therefore be retroactively valid) after the expiry date and up to six months thereafter.” Additionally, if the prior mark is already the basis for an opposition or has a case pending against it, the ling of the copy mark will therefore cause the prior mark to expire.
Other issues have been pointed out by Logaras. For instance, under the new law, all national trademark applications and existing registrations will only be covered for the literal meaning of the general terms of the class headings for Nice Classications of goods and services. Logaras points out that it is unclear whether owners of existing national trademarks “will be granted a grace period to make a declaration and clarify from an alphabetical list, which goods and services they had intended to seek to protect with their trademark specication”.
In infringement proceedings, compensation will now only be entitled when there has been an act of infringement due to wilful misconduct or gross negligence. Previously, any degree of negligence was sucient for compensation. Logaras notes that “this new provision offers a defence option to infringers,” as well as being inconsistent with the degrees of negligence required for copyright and patent infringement.
Logaras expands: “As to damages, the national legislator interpreted the term ‘knowingly, or with reasonable grounds to know’ in Article 13 of Directive 2004/48/EC on the enforcement of intellectual property rights, as ‘willfully, or acting in gross negligence’. While this may be open to debate, the fact remains that national patent and copyright laws do not differentiate between gross and ordinary negligence, which creates a signicant discrepancy in the protection of intellectual property rights in Greece.”
Law 4679/2020 came into force on 20 March 2020. Its true impact, however, will be best assessed when we see some of these questions answered in practice.
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