On March 20, 2020, the new law 4679/2020 on trademarks was published, which entered into force immediately implementing the directives EC/2015/2436 and EC/2004/48. As a result of the adoption of the new trademark law, there is almost absolute identification between the Greek and the EU trademark system.

Some of the key changes introduced by the new trademark law are:

1) Prerequisites for the filing of the trademark application

Article 2 introduces new types of marks such as position, sound, shape, pattern, motion, multimedia and hologram marks, which were not accepted under the previous law because the prerequisite of graphic representation of the trademark could not be fulfilled. The new art. 2 par. 2 provides the elimination of the obligation of graphic representation of the trademark as a condition of acceptance, thus, the new types of trademarks can be registered.  

2) Classification of products and services in the trademark application

A significant change in existing practice has occurred in the new law regarding the description of products and services in the trademark application, as provided for in Article 23.

The new law in Article 23 explicitly stipulates that products and services must be identified by the applicant with sufficient clarity and accuracy so that economic operators can, on the basis of the trademark application only, determine the extent of the protection sought. If the applicant refers to the heading of the class, the literal approach is adopted, which means that the mark will cover products and services that clearly fall within the literal meaning of the general terms of the heading.

3) Abolition of the ex-officio rejection of a trademark application for relative grounds of refusal

A result of the new practice adopted by the trademark law in art. 24, is that the owners of earlier trademarks national, community and international with extension of protection in Greece, will be informed about the submission of the new trademark application, however, the previous mark does not constitute anymore a ground for refusal of the new application. If the proprietor of the earlier trademark uses its trademark and considers there is an infringement of its rights, it is allowed to file an opposition based on the relative grounds of refusal of art. 25.

4) Content and scope of protection of the right

A welcome change in the new trademark law is the provision of increased protection of the trademark proprietor through the grid of articles 7, 8 and 10. More specifically:

Article 7 contains – indicatively and not exhaustively – a list of actions which are considered to infringe the trademark and which the proprietor of the trademark may prohibit to third parties. These are actions constituting the most common ways of infringing a trademark – including the use of the trademark as a corporate name – which were not provided for in the previous law.

In addition, the new law provides the protection of the proprietor in the case of preparatory actions in connection with the use of packaging, labels, safety features, etc. when this use by a third party constitutes a violation of the rights provided by the law to the beneficiary (art. 8). Under the new law, it is possible for the proprietor to prohibit these actions before the infringement occurs.

Further, an important and innovative provision is Art. 10 which states that if an agent has registered the proprietor’s trademark in its own name without the proprietor’s consent, the proprietor of the trademark, in addition to the right to cancel the trademark, is allowed to request the transfer of the trademark to its name, following court proceedings.

5) Provision of cooling-off period in the opposition proceedings

In the opposition proceedings the idea of the cooling-off period is introduced. Article 27 provides that at the joint request of the parties, they shall be given a period of at least two months in order to explore the possibility of an amicable settlement.

6) New defense lines in infringement proceedings

A major change in the new trademark law is the provision of the art. 38 par. 12 according to which in the infringement proceedings, the defendant is allowed to counterclaim the revocation or invalidity of the trademark on which the action is based, and the validity of the trademark will be decided by the court that is competent for deciding the trademark infringement. This provision is connected to another major change introduced in the new trademark law referring to the possibility of the civil courts to decide on the validity of a trademark if it is challenged. This possibility is the result of the transfer of competence from the administrative to the civil courts, also provided in the new trademark law.

Also, in article 42 concerning the interim injunction proceedings, it is provided, for the first time, the possibility to file a counterclaim for revocation or invalidity of the trademark.

Further, for the first time, Article 40 par. 1 on the infringement of a trademark provides that the defendant in an action for infringement of a trademark may request the plaintiff to prove the use of the trademark on which the action is based, during the five years preceding the filing of the action. If the plaintiff fails to prove the use of the trademark on which the action is based, the action is rejected.

The same possibility is provided for the first time also in the interim injunction proceedings, in article 42 par. 1, where a request for proof of use can be submitted orally during the discussion.

7) Transfer of appeal proceedings relating to invalidity and cancellation proceedings to the civil courts

Article 47 par. 4 concerning the application for revocation or invalidity of a trademark provides that the applications for invalidity or revocation are decided by the Administrative Trademark Committee in the first instance, as it is required by the directive, in order to achieve a faster administration of justice. However, if the decision of the Committee is challenged, the civil courts are competent in the appeal proceedings and not the administrative courts, as it was the case until now. The provision is also related to the change providing the transfer to the civil courts of the competence to decide on the validity of a trademark if it is challenged.

8) Revocation and invalidity of a trademark

In the invalidity procedure, a considerable change is included in art. 54 which provides two separate periods during which the cancellation applicant must prove the use of the trademark on which the invalidity application is based: the first period is the five-year period preceding the date of filing of the cancellation application and the second period is the five-year period preceding the date of filing or priority of the contested trademark, if the earlier trademark had already been registered for five years at that moment, in both cases.

9) Certification trademarks

For the first time in Greek trademark law, articles 56 et seq. provide for the certification trademark. The certification trademark is related to the guarantee of the special characteristics of certain products or services and has nothing to do with the commercial origin of the products or services. Various characteristics can be certified such as the material, the way the products are made or the services are offered, the quality, social norms such as the fair trade or the environmental protection, but not the geographical origin of products or services.

It is important to point out that the owner of the certification trademark is not allowed to engage in a business activity that involves the provision of the type of products or services that are certified.

10) Transfer of responsibilities to the OBI (Industrial Property Organization)

Lastly, it is important to refer to the new Law 4796/2021 which was published on April 17, 2021 and provides the transfer to the OBI of the responsibilities of the Trademark Department of the General Secretariat of Commerce and Consumer Protection of the Ministry of Development and Investment regarding trademarks, as provided in Law 4679/2020. Greece was one of the few countries where different bodies dealt with trademarks on the one hand and patents and designs on the other. From now on, OBI will handle all the rights of industrial property in Greece.

In this respect we should point out that although the new law does not affect the substance of Law 4679/2020, the additional provisions concerning the competence of the OBI to verify the authenticity of the final decisions of the EUIPO that determine the amount of expenses and insert the enforcement clause (exequatur) as well as the possibility of granting a signature authorization to the four categories of employees involved in the process of registration of trademarks, are important and positive changes which will enhance the proper functioning of the whole system of trademarks.

Anna Roussou, Lawyer

DEA Droit Privé, DESS Propriété Industrielle,

Voelkel Kataliakos Roussou Law Office