October 2023

Decision of the Athens Court of First Instance on the Prohibition of the Sale, Marketing and Advertising of Counterfeit Bags

The decision of the Athens Court of First Instance, No 5987/2023, was recently issued. The latter granted our client's application for interim relief with a specific request for a temporary ban on the sale, marketing, advertising and general promotion of counterfeit bags distributed by a foreign company in the Greek market through a domestic company. Therefore, in so far as both of them infringed our client's rights in his registered Community designs, the application for interim measures was directed against both of them. That application for interim measures was based both on the provisions of industrial design law as a principal basis and on the provisions of unfair competition law as a subsidiary basis. It should be noted that the opposing foreign company had, prior to the hearing of the application for interim measures at issue, brought applications for a declaration of invalidity of the registered Community designs, which are pending before the European Union Intellectual Property Office (EUIPO). With regard to the main legal basis of the application, which was based on the provisions of Regulation No 6/2002, that is to say, the European Union legislation governing, inter alia, the acquisition and protection of rights in Community industrial designs, that judgment held as follows: "Consequently, and provided that the merits of the applications concerned have not been established, the applicant has the right to use them exclusively, as well as the right to prohibit any third party from using them, in particular in the sense of manufacturing, offering, putting on the market, importing, exporting, using a product in which the design is incorporated or applied, and stocking the product for those purposes. The said bag ... of the applicant's company through concerted advertising and general promotional activities has led to the establishment of the product and sales are on the rise.[...] Thus, it is likely from the above that these bags (i.e. those of the opposing company) are imitation products of the applicant's products, since they have the exact same shape and similar dimensions to the applicant's products, bear the same external features and adopt the general design of the applicant's products. By their conduct, the defendants infringe the applicant's rights in the abovementioned designs [...], taking advantage, without having any right to do so, of their aesthetic appeal to the consumer, in order to promote the sale of the products which they themselves market'.

The opposing parties, defending themselves against our client's application, raised a plea of invalidity of his registered Community designs on the ground of lack of novelty and individual character, which the Court of First Instance rejected as unfounded in substance, stating the following grounds: "The defendants' claim for invalidity of the contested registered designs on the grounds of lack of novelty and individual character is likely to be rejected as essentially unfounded, because from the illustrations of bags incorporated in the defendants' application note, which were necessary for the definition of their claim (PolProtAth 4075/2019, NOMOS), it is not likely that they confirm the lack of novelty, inasmuch as the second and third designs are alleged to be later than 2017, when the first basic design was registered, while the first design, in view of the absence of a strip starting from the front of the bags and ending when the bag is closed on the front, does not negate the individual character of the applicant's designs, since the overall impression produced on the informed consumer differs from that of the applicant's design'.

Finally, in that judgment, the Athens Court of First Instance also accepted the alternative basis of the application based on the provisions on unfair competition, making the following assumptions: "At the same time, that conduct of the defendants also constitutes an act of unfair competition to the detriment of the applicant, since the products which they marketed and which were similar to the products which were the subject of the commercial activity of the opposing party, because of their almost absolute external identity with the latter, owing to the adoption of their characteristics which have become their distinctive features, could confuse the average consumer as to their origin. In view of the foregoing, it is likely that the applicant maintains against the defendants claims for protection of its aforementioned Community registered designs under both the provisions of the abovementioned Regulation and Law No. 146/1914 on unfair competition'.