Can I have a Right to a Specific Indication if I have not registered it as a Trademark?

Legal Insight

February 2022

Ioannis Psarakis, Lecturer, LL.M (III), PhD  Cand.

Republished from the site of the Athens Chamber of Commerce (see here) 

Summary: The answer is yes. But let's not take any chances.

Ι. The most common misconception

One of the most common misconceptions of our clients during the first meeting regarding the issues of product "names", website names, trademarks and other related rights is the following: they believe that protection is only provided if they have followed the procedures for the registration of a trademark in the Trademark Register. So, for example, in the case where they have used a particular indication for years (even decades), which is then (usually in bad faith) registered by a third party as a trademark and then the third party takes action against them on the basis of that right (trademark), they consider their case rather "lost"; at best they come to us with significantly lower expectations. But the truth is that this is not the case at all.

This is because the exclusive right to an indication (word, phrase, image, etc.) is acquired in two ways: either through the formal trademark registration procedure, in which case we will speak of a right under the formal system (precisely because what is primarily examined is whether the formal procedures leading to the registration of the trademark have been followed), or through genuine use and dissemination in trade. In the first case it will be a trademark (the law on trademarks is Law 4679/2020). In the second case it will be a right of the "substantive system" - the relevant law is Law 146/1914. That is, speaking of a "national trademark" we refer only to that indication for which the registration procedure provided for in Law No. 4679/2020.