A view of the Greek draft trademark law after the close of public consultations
The public consultation of the Greek draft law implementing the European Trade Mark Directive 2015/2436 (the Directive) - which had opened on
January 11, 2019, closed on February 1, 2019, after two short extensions, here. Comments from various interested parties, including INTA, the Athens Bar Association and the Hellenic Association of Branded Products Industry, were submitted. Following completion of the review of the comments and finalization of the draft law, the text will be submitted to the Parliament for voting. The draft law maintains the system of ex officio examination on both absolute and relative grounds, a system that has been followed in Greece since the first trademark law of 1939. Even though the Directive leaves it up to the Member States to decide whether to maintain such an ex officio examination on relative grounds, concerns were raised in the public consultation about the suitability of such examination process in light of current market and legal needs, as well as the significant increase of prior rights to be considered. [The examiner needs to search not only for prior national marks as was the case when the system was first introduced in Greece, but also for prior EUTMs and IRs, thereby increasing the trademark office burden.]
In view of the fact that trademarks not used for five years under the provisions of the Directive enjoy limited protection (e.g. they may not be relied upon to oppose a later mark), the ex officio examination based on relative grounds was criticized as over - protective of such marks. This is because the examiners have no way of establishing whether the prior marks that they find are used or not. This should be an issue to be considered in finalizing the draft law.
Greece has maintained a bifurcated system, namely that the Trademark Office and administrative courts are competent for opposition, cancellation and invalidity actions, while the civil courts are competent for infringement actions. The Directive requires Member States to introduce cancellation and invalidity actions before the Trademark Office, which Greece already has in place.
It does not require them to introduce a system of revocation and invalidity equivalent to that of EUTMs whereby the civil courts shall also be competent for cancellation and invalidity actions via counterclaims. Even more so, it does not require them to introduce parallel competence for direct invalidity/cancellation actions before civil courts. Member states, such as Greece, that keep the relevant competence for invalidity and revocation actions solely within the Trademark Office/administrative courts, are in line with the Directive.
The draft law introduces the following main new points:
• The requirement for graphic representation was eliminated. An analytical description and definition of all types of marks, including new types, such as position and holographic marks, was included in the draft law, to facilitate trademark applicants. Technical details on filing such new types of marks are to be determined by virtue of a ministerial decision to be issued at a later stage.
• Protection of trademark rights against goods in transit was introduced, providing that trademark owners have the right to stop any third party from bringing goods into Greece from third countries, even where the goods are not intended to be released for free circulation in the Greek market. Such right may not be exercised if the owner of the goods or the declarant proves that the holder of the trademark rights may not prevent the commercialization of the goods at the country of destination.
• The possibility to request transfer of the mark, which was filed by a representative/attorney without authorization, was provided as a right that the trademark owner may exercise along with, or even instead of, the right to prohibit the use. This will facilitate the trademark owner in providing for more expedient relief in such abuse of representation cases.
• The defense of acquiescence in an infringement action, which currently exists in Greek trade mark law, is now extended to cover invalidity proceedings. This is accomplished by also making use of the discretion provided in the Directive to extend the application of the same defense not only against holders of prior trademark rights but also against holders of other prior rights that constitute “earlier rights” within the meaning of the trademark law and the Directive (such as personality rights, unregistered rights, and copyright).
• The right to request proof of use of the mark, which exists in the context of opposition and invalidity actions, was maintained for these proceedings and introduced as well in infringement proceedings. For invalidity proceedings, an additional possible relevant point in time for proof of use was introduced, namely the date of filing of the later mark.
• Even though not mentioned in the Directive, but taking a cue from the introduction in Greek law of mandatory mediation in the context of infringement proceedings, the possibility of voluntary mediation was introduced in the proceedings before the Trademark Administrative Committee (competent for oppositions and cancellation/invalidity actions) in order to provide broader opportunities for the parties to find an amicable solution. The draft law also introduces a cooling-off period in proceedings before the Trademark Office. The introduction of voluntary mediation at the Trademark Office proceedings on disputes between private parties was welcomed by the Athens Bar Association.
• As Greece already has a system whereby the Trademark Office (through its competent body, the Trademark Administrative Committee) and the administrative courts are solely competent for the hearing of invalidity and revocation actions, there was no need for amendment in order to align with the Directive.
• As regards the point in time from which the trademark is considered invalid, in case an invalidity action against such mark is successful, this has been changed, namely from the time of filing of the invalidity action to the time of filing of the invalid trademark. As regards revocation, the possibility for a revocation to start, in case of a successful revocation action, from the time of filing of the revoked trademark, was also provided.
• In accordance with CJEU case law and the Directive, the draft law confirms that immunity from infringement based on a registered trademark is a thing of the past, such that infringement actions can also be brought against a registered trademark. This is not expressly stated in the draft law but follows from the provision of defenses that are available to a trademark owner should he be attacked for infringement of a third party trademark. Such defenses are introduced through implementation of the intervening rights provisions (defenses) of the Directive. If a trademark owner can put forward such defenses in case of attack for infringement of a third party mark, it means that he is not immune to such attack. Given that similar a contrario arguments could follow also from the existing law, albeit to a lesser extent, calls for explicit mention of the possibility to attack a registered trademark for infringement of another registered trademark have been expressed in the public consultation.
• Certification marks have been introduced into Greek draft trademark law.
• The draft abolishes the special legal interest that is required currently for the filing of revocation actions, so that anyone shall henceforth be able to file such actions. It also provides that for non-use actions, the onus of proof is reversed and shifts to the trademark owner of the mark under revocation.
Picture on upper left is ChrisO who has released it into the public domain.
Picture on the lower middle is by Motherclanger and is licensed under the Creative Commons Attribution-Share Alike 4.0 International license.
