April 2024

Decision of the Administrative Committee of Trademarks of the OBI regarding Cancellation of Trademark Due to Bad Faith Filing by a Representative

Recently, decision no. 64/2024 was issued by Section A of the Administrative Committee of Trademarks of the Industrial Property Organization, which fully accepted an application filed by our client company for the cancellation of a registered national trademark, which infringed on a prior right of our client to a distinctive feature of the substantive system, established in transactions through its systematic and uninterrupted use since 2003.

The cancellation application was based on two grounds of relative inadmissibility, namely, on the one hand, the existence of a risk of confusion with our client's prior right, and on the other hand, the fact that the cancelled trademark was filed contrary to good faith by a 'representative' of the holder of the prior distinctive feature of the substantive system.

Specifically, the aforementioned decision of the Administrative Committee of Trademarks accepted the presence of the above reasons for relative inadmissibility by making the following critical assumptions: “[…] Because the Committee, in accordance with the aforementioned and based on the above factual incidents, taking into account that the applicant company is the holder of a prior right, which was transferred to it – as above – by the original holder, provider, that the trademark under examination was registered in the name of the latter, who was a representative of the holder, without the latter's permission or consent, that the representative, that the representative proceeded with the registration of the trademark defensively, without using it in transactions, that the two compared signs are absolutely identical and intended to distinguish similar products, resulting in a risk of confusion and association risk to the consumer public regarding their origin, unanimously decides that in the present case, the provisions of articles 10 and 4 paragraph 1 item id of law 4679/2020 apply […]”. Thus, the Administrative Committee of Trademarks, having accepted the said cancellation application, proceeded with the cancellation of the disputed trademark for all the products for which it was registered.

As stated in the explanatory report of law 4679/2020 on article 10: "Article 10 regulates a specific case of bad faith at the time of trademark filing. This is the case where a representative files a trademark in his name that truly belongs to the represented party. The concept of a representative is interpreted broadly to include a commercial distributor and any other related case. In such a case, the represented party (actual right holder) can request the prohibition of the use of the trademark, its cancellation, or the transfer of the trademark to him. In the transposition of the relevant provision to Greek legal order, care was taken so that the representative can request the transfer of the trademark both through an application to the Administrative Committee of Trademarks and through litigation in civil courts. In the latter case, actions for prohibition of use and for transfer of the trademark can be accumulated in the same document, which corresponds to the principle of economy of litigation. Conversely, the provision does not cover cases where there is no element of bad faith. In the case of such a subsequent disagreement, article 10 does not apply, nor by analogy, because the element of bad faith at the time of filing is lacking."