Law 4679/2020:The New Framework for the Protection of Trademarks in Greece
The new Greek Law 4679/2020 on the protection of trademarks provides for significant changes regarding the types of trademarks, the trademark registration procedure, the opposition of proof for trademark use, the administrative procedures before the Administrative Trademark Committee and the judicial protection of trademarks.
On March 20, 2020, the L. 4679/2020 (Official Government Gazette 71/A/20-03-2020) was published under the title "Trademarks Incorporation of the Directive (EU) 2015/2436 to approximate the laws of the Member States relating to Trademarks and the Directive 2004/48/EC on the enforcement of intellectual property rights and other provisions".
The new Law brings forward the following changes: •A stand-alone, modern and integrated approach on trademark protection.
• The incorporation of Directive (EU) 2015/2436 into Greek law, thus introducing new institutions in order to re-inforce competition and new "nontraditional" types of trademarks. •The alignment of Greek law with Regulation (EU) 2017/1001 on the European Union Trademark.
The law has retroactive effect on trademark filing declarations, oppositions and applications for revocation or annulment, filed as of 14/01/2019 and onwards.
1. Structure
Law 4679/2020 includes 90 articles in total and is structured as follows: •In Chapter A, the definitions and requirements of trademark protection, including the scope, definitions, trademark components, absolute and relative grounds of inadmissibility, are defined. •In Chapter B, the content of the right to trademark and the extent of its protection are specified. •Chapter C describes the conditions of distribution of trademark rights as an asset, including the transfer, the licensing and the establishment of proprietary rights in rem. •Chapter D provides for the registration procedure and the duration of the trademark right as well as the administrative procedures of appeal and opposition before the Administrative Trademark Committee. •Chapter E provides provisions for legal remedies for the judicial protection of Trademarks. •Chapter F describes the administrative procedures before the Trademark Administrative Committee for the revocation and annulment of trademarks. •Chapter G sets out the framework for certification marks and collective marks. •Chapters H, Ι, and J stipulate provisions regarding international trademarks, EU trademarks and foreign-domiciled trademark applicants respectively. •Finally, Chapter K sets out the special, transitional and final provisions of the Law.
The new Law replaces the pre-existing trademark legislation by abolishing articles 121 to 182 of L. 4072/2012.
Nevertheless, articles 184 et seq. of the L. 4072/2012 shall remain in force for the Greek trademark, which constitutes an indication of quality awarded by the Committee to agricultural products.
2. Summary of Innovations Compared to Previous Legal Regime
The main innovations of the new Law are the following:
•The provision of new “non-traditional” forms of trademarks and the abandonment of the “graphic representation” requirement.
•The introduction of the institution of certification marks.
•The ex-officio investigation of inadmissibility reasons.
•The provision of a series of administrative appeals before the Administrative Trademark Committee as well as judicial remedies before the courts for the protection of trademarks.
•The establishment of the application for proof of use in all judicial proceedings for trademarks but also in proceedings before the Administrative Trademark Committee.
•The right to demand publication of civil and / or criminal courts’ decisions. •The imposition of criminal offenses of trademark rights’ infringement. •Changes to fees.
3. The Main Changes and their Importance
• “Non-traditional” Trademarks
Article 2 of the L. 4679/2020 provides for the possibility of registering a verbal mark, figurative mark, shape mark, position mark, pattern mark, motion mark, multimedia mark and hologram mark.
The new Law allows for the registration of any sign used by a business in relation to its products and services as long as this sign is distinctive, i.e. functions as an indication of origin and can be represented on the trademark register with clarity and accuracy.
Therefore, the definition of what may constitute a trademark is sufficiently broadened in response to the demands of contemporary trade and the trademarks’ functions in transactions, as they have evolved.
• Certification Marks
Article 56 of L. 4679/2020 introduces the new institution of the "certification marks". Certification marks distinguish the products or services certified by the trademark holder as to the material, the mode of manufacture of the products or the performance of services provided, the quality, accuracy or other characteristics. The geographical origin is excluded from products and services that do not have the foregoing certification, so as not to violate the provisions on protected designations of origin and geographical indication.
Certification marks should not be confused with collective marks, as the latter characterize the commercial origin of certain products and services, informing the consumer that the product manufacturer or service provider is a member of a particular association and that he has the right to use that mark. In juxtaposition, certification marks are related to the guarantee of specific characteristics of certain products and services set by the certification mark association.
• Ex officio examination of trademark’s relative inadmissibility
According to article 5 § 5 of L. 4679 / 2020, the Examiner of the Trademark Committee examines the lawfulness of the trademark application on procedural and substantive grounds regarding both the absolute and the relevant grounds of inadmissibility. Such an examination includes the investigation for previous conflicting trademarks, which are affected by the filing of the application according to the examiner’s judgment. This procedure reinforces the protection of trademark rights-holders.
• Administrative Appeals before the Administrative Trademark Committee The Administrative Trademark Committee is competent to adjudicate the following administrative appeals: •Oppositions against decisions that accept the filing of trademarks before Administrative Trademarks Committee (Article 25 of L. 4679/2020). •Oppositions against decisions that accept the filing of trademarks before administrative courts (Article 25 of L. 4679/2020).
• Appeals against examiners’ decisions that reject the trademark filing (Article 29 of L. 4679/2020). •Applications for the revocation of trademarks (Article 50 of L. 4679/2020). •Applications for the invalidity of trademarks (Article 52 of L. 4679/2020). •Oppositions to any pending procedure before the Administrative Trademark Committee (Article 30 of L. 4679/2020).
Furthermore, the Administrative Trademark Committee resolves any dispute arising between the Trademark Department and the applicants or holders of trademarks or third parties in the context of applying the Law.
• Appeals before Courts Administrative
Courts are competent to adjudicate appeals against: • The administrative Trademark Committee’s decisions that rule on the decisions of Examiners regarding objections or applications for dispute resolution. Appeals are required to be filed within sixty (60) days from the publication of the decision (articles 32 and 47 § 3 of L. 4679/2020).
Civil Courts are competent to adjudicate (Article 47 § 4 of L. 4679/2020):
• Disputes regarding the trademark infringement .
• Oppositions of article 583 of Civil Procedure Code against the Administrative Trademark Committee’s decisions on the applications of trademark’s revocation or invalidity.
• Claims and counterclaims of restraining orders on trademark’s revocation or invalidity.
• Trademark Assignment Complaints (Article 10 § 1 of L. 4679/2020): •Actions on the right to information (Article 39 of L. 4679/2020).
Especially for the revocation or invalidity of trademark, the new Law entitles the defendant to file a trademark counterclaim before the civil courts by requesting the revocation or invalidity of trademark on which the complaint is based.
According to prior legislation, the exercise of the application for the revocation or annulment of a trademark was possible in the context of an administrative procedure before the Administrative Trademark Committee (Article 158 § 1 and 162 of L. 4072/2012).
Finally, criminal courts have jurisdiction over the enforcement of criminal offenses of trademark infringement provided by the Law (Article 39 § 4 of the Law).
Application for Proof of Use Before the Trademark Administrative Committee and Civil Courts
The L. 4679/2020 introduces the institution of the application for proof of trademark use both before the Administrative Trademark Committee and civil courts (Articles 28, 40 and 42 of the Law).
After submitting the application, the trademark holder must furnish proof either (i) that within the five-year period prior the filing date of the declaration or claim’s opposition, the previous trademark has been put in genuine use for its registered products or services on which the opposition or action is based, or (2) whether there is a reasonable reason for non-use.
After submitting the application for proof of use, there is 30 day period when the trademark holder may submit the relevant evidence and, then, a period for the applicant’s memorandum submission.
In case the trademark holder does not prove the genuine use of its trademark or that there is a reasonable reason for its non-use, the opposition or action shall be rejected without examining the case’s substance.
The institution of the application for proof of use applies accordingly to the procedure of restraining orders (Article 42 of the Law).
Judicial Decisions Publication
Civil or criminal courts may order the publication of their trademark infringement decisions on the internet, media or social media, at the plaintiff’s request.
Criminal Provisions
Article 45 of L. 4679/2020 provides for the following criminal offenses in case of trademark infringement:
•Imprisonment of at least six (6) months and a fine of at least six thousand (6,000) euros is the sanction to anyone who knowingly: (a) uses a trademark without having such a right; or (b) launches, possesses, imports or exports products or offers services using another’s trademark; or (c) puts a trademark on products without having such a right.
•The same penalty applies to anyone who intentionally and without having such a right uses a reputation mark to exploit or damage its reputation.
•Imprisonment of at least two (2) years and a fine from six thousand (6,000) to thirty thousand (30,000) euros shall be imposed upon trademark infringement of an identical mark used for identical or similar products or services are provided: (a) if the benefit pursued or the damage threatened is particularly large and there is exploitation on a commercial scale, or (b) if the debtor performs the relevant operations professionally.
•Anyone that intentionally uses symbols and signs of public interest shall be punished with a fine of up to two thousand (2,000) euros.
In the first three cases, criminal prosecution is exercised on appeal, while in the latter case it is carried out ex officio.
• Changes to Fees
According to article 87 of L. 4679/2020, the fee for a national trademark registration submitted manually is increased by € 10 (from € 110 to € 120) whereas the electronic fee is reduced by € 10 (from € 110 to € 100). In addition, the paper deposit fee for renewal of trademark protection is increased by € 20 (from € 90 to € 110). On the other hand, the fee of registration of EU or international trademark conversion or a division. The Law does not require a fee for amendments of name or legal form or residence or registered office, the registration of trademark rights’ restrictions or the transfer of a EU trademark application, as the previous law required (Article 179 of L. 4072/2012).
The fees paid to the state for the operation of the trademark register are the following:
- Trademark Registration
• When manually submitted, one hundred and twenty (120) euros. •When electronically submitted, one hundred (100) euros.
• For any additional class of products or services, twenty (20) euros. - Trademark Renewal
• When trademark renewal is submitted manually, one hundred and ten (110) euros.
• When trademark renewal is submitted electronically, ninety (90) euros. •For any additional class, twenty (20) euros. - Trademark Transfer: Ninety (90) euros. - Trademark Licensing: Ninety (90) euros. - Before Administrative Trademark Committee: •For the filing of appeals, oppositions and applications before the Administrative Trademark Committee, seventy (70) euros,
• For the procedural discussion of appeals, oppositions and applications before the Administrative Trademark Committee, forty (40) euros.
4. Conclusion
The L. 4679/2020 modernizes Greek trademark legislation to better meet contemporary business needs and provide trademark holders with appropriate protection of their interests in the course of trade.
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