August 2022

Decision of the Piraeus Court of First Instance rejecting an Application for Insurance Measures requesting the prohibition of the use of a distinctive title

The decision No. 1391/2022 of the Piraeus Court of First Instance has been published, which rejected an application for injunctive relief on behalf of our opposing client under the new trademark law No. 4679/2020. In particular, it was held that the earlier use of a distinctive title takes precedence over the later filing of a trademark and that in any case the tolerance of use deprives the applicant of the possibility of causing risk, a necessary condition for obtaining injunctive relief.  

It should be pointed out, as was also noted in our pleading, that the principle of priority in time applies as a means of eliminating conflicts between all categories of distinctive signs, that is to say, irrespective of whether the conflict is between the distinctive signs of an undertaking and each other, or between them and the distinctive signs of goods or services, and irrespective of whether the distinctive signs were acquired under the substantive or formal system, because all distinctive signs are equal. Thus, the person who first acquired a distinctive sign of an undertaking, that is to say, a distinctive sign under the substantive system, is protected under the conditions laid down by law against the person who has subsequently registered the same or a similar sign as a trade mark. Indeed, it is indicative that the same is true, that is, the earlier right to a distinctive sign of the substantive system prevails, even if the subsequently registered mark has become a trade mark with a reputation. The legislature's unconditional adoption of the principle of priority in time is thus apparent. Moreover, as regards the conflict between a distinctive sign and a trade mark, the following is clear: a trade mark takes precedence from the date of its registration, retroactively from the filing of the declaration, whereas a distinctive sign takes precedence from the actual fact of its establishment in the course of trade. Finally, the priority in time of a trade mark or distinctive sign also works in favour of the person acquiring it, since he acquires it with the same content and weight. The passage from the monograph by Fountedakis, The Conflict of Distinctive Signs, 2003, p. 67: 'It is accepted that the successor acquires the right under the same conditions as the grantor and enters into the exact legal position of the latter; in other words, it is not a new right (and therefore a new distinctive sign) but a continuation of the grantor's right, with the obvious consequence that the original priority in time is maintained and applies to the new proprietor'.

(for more see here)