The new trademark Law 4679/2020 has been enacted in Greece
The new trademark Law 4679/2020 has been enacted in Greece – non-traditional trademarks, certification marks, social media, mediation, changes in the fees and redefinition of the courts’ jurisdiction are at the core of the reforms
Until recently, trademarks were governed by the provisions of Law 4072/2012. The new Law 4679/2020 (hereinafter referred to as the “Law”), which transposes (with considerable delay) Directive (EU) 2015/2436, was enacted in Greece on the 20th of March 2020. Apart from transposing the aforementioned Directive, the new Law aims at harmonizing the national trademark system with Regulation (EU) 2017/1001 on the European Union trade mark.
The amendments brought forward by the trademark Law are both procedural, as well as substantive. Let us have a look at the most significant provisions of the new Law:
Graphic representation and “non-traditional” trademarks
Among the key amendments, the new Law has waived the requirement of the graphic representation, as a prerequisite for a sign to fall under the definition of a trademark.
More specifically, pursuant to article 2 of the Law, “a national trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colors, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the Register, in a manner which enables the
competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.
It is interesting to note that the Law makes explicit reference to (“unconventional”) trademarks such as three-dimensional shapes, position marks, motion trademarks, audiovisual and hologram trademarks.
Such an expansion of the notion of a trademark together with the abolishment of the graphic representation “opens the floodgates” for the registration of non-traditional trademarks which may have not fallen under the definition of a trademark pursuant to the previous legal regime.
The Law introduces the notion of “certification marks”, which are also known as “guarantee marks”.
Certification marks are capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material,
mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.
Amendment of fees
The new Law also amended the fees payable for the operation of the trademark registry, with most noteworthy the reduction of the fee for the submission via electronic means of an application to register a trademark (from 110€ to 100€ for the first class of goods or services) and the increase of the fee for the submission of a hard copy application to register a trademark (from 110€ to 120€ for the first class of goods or services).
Ex officio search by the Trademark Office
It is also interesting to note that the new Law allows the Trademark Office to conduct an ex officio search, for the purposes of determining the existence of earlier trademarks which might be affected by the application for the registration of a new trademark and notifies the proprietors by any means (including e-mail), in order to submit (if they so wish) an opposition.
Countersuit before the Civil Courts for the revocation or cancellation of a trademark
Contrary to the previous legal regime, which provided for the submission of a motion to revoke or cancel a trademark, before the Trademark Administrative Committee, the defendant in infringement proceedings can now file a countersuit before the Civil Courts for the for the revocation or cancellation of the trademark upon which the lawsuit is filed.
As part of the objective of promoting alternative dispute resolution procedures, the Law provides the parties with the option to mediate in proceedings pending before the Trademark Administrative Committee. More specifically, the parties have the option of submitting a joint motion for mediation, at any point after the submission of an opposition, or application for revocation or cancellation of a trademark and intervention. The motion is filed before the Trademark Office and it is forwarded to the Trademark Administrative Committee. If the parties submit a joint motion for mediation, the proceedings before the Trademark Administrative Committee are suspended.
Publication of decisions in social media
Acknowledging the pivotal role of social media, not only as means of entertainment but also as means of information, the new Law provides that, for the purposes of informing the general public and the consumers, the decisions regarding trademark infringements may be published not only in the traditional media, but also in social media.
Entry into force
Due to the fact that, as already mentioned above, Directive (EU) 2015/2436 is incorporated in the Greek legal framework with significant delay and that it should have been transposed in the the national legal system already from the 14th.01.2019 (!), some of the Law’s provisions shall be applied retroactively, as of that date – in practice, the Law shall have retroactive effect for the trademark registration applications, the oppositions and the applications for revocation or cancellation, which were submitted from the 14.01.2019 onwards.