Truths and figures about the trademark (vol. II)

Legal Insight

March 2022

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

(Republished from Euro2day)

Summary: The purpose of the article (see here the first part) is to explain in simple words and in the form of questions and answers the reasons why trademark registration is a highly advantageous option for the entrepreneur and even, in the case of Greece, at a very low cost. We present interesting examples - always helpful for a better understanding - and draw the attention of the interested parties to possible areas of risk.

1. A third party uses a sign that is identical or substantially similar to my trademark. What can I do?

There are several options. The most common - and cheapest - is to start with an out-of-court declaration. Then, if there is no compliance, an application for injunctive relief with a request for an interim injunction will follow so that as early as the next 2-3 days (often this will be the very next day - it depends on the Court) the infringement will cease and we can safeguard our interests. If the third party has registered a trademark, it will also be necessary to file a request for cancellation (application for trademark invalidity) before the Trademark Administrative Board (TAB). We have said before that trademark registration does not secure to an absolute degree by itself if the correct legal examination has not been carried out beforehand. It may just as well create an illusion of security which will encourage investment in a mark which, ultimately, will favour a third party.

Finally, another option is to initiate criminal proceedings. The strategy will be tailored to the circumstances of each case and geared to the objectives of the signatory's client. This is the right approach. Each solution is unique, as is the case.

2. I neglected and did not register a trademark. Does this mean that I am not protected? Can any third party register my trademark and now own it?

Trademark registration is one of the actions that an entrepreneur must take even before starting his business. By registering a trademark, always after a proper legal check, he creates a solid foundation on which he can build his efforts and endeavours.

However, the truth is that trademark registration is not the only way of granting exclusive rights to a particular indication. This can also be established by use or dissemination in trade - then we are talking about a substantive system right. Conversely, if it opts for registration, we are talking about a formal system right. The reason for the difference in terminology is understandable: while in the substantive system we examine the substance of the case, i.e. the facts (was it actually used? was it disseminated in trade?), in the registration of the formal system we are satisfied only with the formal act of registration.

Already from this observation it is clear why trademark registration establishes a firm foundation, whereas the exclusive right under the substantive system will always remain disputable by everyone - it will have to be proved anew in each individual dispute. Furthermore, the person who has registered a trade mark is strengthened by procedural 'facilities' that are extremely crucial in the event of litigation, which provide him with 'further weapons' to defend his position (for example, showing 'pirated' products bearing the trade mark or showing accounting records proving the opposing party's profits from the appropriation of a trade mark and the corresponding claim for damages). 

However, the expediency of trademark registration is also evident from the following: while an unregistered indication is protected (if protected - see conditions set out above) under the provisions of the Unfair Competition Act (Law 146/1914), trademark registration also provides us with the further protection of Law 4679/2020 on national trademarks.

Of course, we still have the protection of the Unfair Competition Act, but the broader protection of the Trademark Act will almost always be chosen. Thus registration opens up a legal space with a plethora of facilities and possibilities, but also more specific criminal offences which if exploited strategically and in the right way (this is where the great importance of experience at the court level which must be combined with a solid knowledge of trade mark law comes in) can make one's trade mark truly invulnerable.

It would therefore be misleading to say that an exclusive right is only established if you opt for trademark registration. However, we strongly recommend that you obtain a right under the standard system (trademark registration). The reasons for this can also be found here.

3. What do I need to pay attention to when creating the sign that I will register as a trademark?

First of all, when creating an indication to be registered in the Trademark Register, we take care to pay attention to the so-called absolute grounds for inadmissibility. These are examined by a competent official of the Trademark Division and if none of them apply, our mark is published. Several of the absolute grounds for inadmissibility are quite technical and require specialised legal knowledge. Limiting ourselves to the most plausible of them, we could refer to those under Article 4(4)(a). 1(b) and (c) of Law No. 

If the Examiner approves the trade mark (i.e. finds that the necessary formal requirements are fulfilled and there are no absolute grounds for refusal), the trade mark application is published. From publication and for three months, our trade mark will be open to challenge by third parties on any ground (e.g. both on absolute grounds of ineligibility which the Examiner failed to identify, or on relative grounds of ineligibility e.g. because it is similar to their right to a degree of likelihood of confusion).

So, in view of the relevant grounds of inadmissibility, we must also be alert to the possibility that it may be similar to a degree of likelihood of confusion with another sign (or even if it infringes a trade mark right of reputation - see here). A skilled trademark attorney will focus his attention on the appropriate details and points which establish such a likelihood and will point them out, and will suggest variations to which the case law of the Courts is sufficient to find no likelihood of confusion. All of this will of course be based on existing judgments of the Courts in similar cases, both national and EU courts, as well as the decisions of the EUIPO. The Guidelines issued by EUIPO will also be crucial.

If this period has elapsed or if any third party objections are rejected, the trade mark will be registered. We now have a trademark (but this does not mean that the trademark is immune - see question " I have a trademark. I registered it in the Trademark Registry. Am I safe?").

4. How long does it take to register and become a trademark owner?

There is no specific time in which someone can assure you that after filing a trademark application you will be entitled to your trademark - that is, that registration will be made. This is because it is unknown when the Examiner will examine your mark (he or she will examine it on certain grounds of inadmissibility - so-called absolute grounds of inadmissibility). Then, if he finds that there are no such grounds, he publishes the mark and third parties now have three months to challenge it (for any reason and in particular if they consider that it infringes their own right, e.g. to a trade mark due to likelihood of confusion). If the three-month period elapses without an "opposition" being filed, then we say that the mark is registered. However, if an opposition is filed, registration presupposes that the opposition will be rejected. If the opposition is upheld, the would-be mark holder can go to the Administrative Courts and get justice. In that case, registration will be effected upon finality of the court decision. For all these reasons, it would be a mistake to refer to a specific period of time within which the party concerned will have a right to the mark.

However, the date of filing the declaration (which we are of course aware of) is ultimately crucial for the following reason: according to Art. 21 par. 3 of Law No. 4679/2020 "a trade mark which has been accepted is deemed to have been registered from the date of filing the declaration". Therefore, since the registration goes back to the time of filing the declaration, the date when the registration is finally made is not as important as the date of filing the declaration.