Trademark legislation: draft law which will repeal the existing law on trade marks (Law 2239/1994)

ΒΑΣΙΛΟΓΕΩΡΓΗΣ & ΣΥΝΕΡΓΑΤΕΣ - ΔΙΚΗΓΟΡΙΚΗ ΕΤΑΙΡΙΑ | 28/04/2011

According to a memo published by the Ministry, the proposed draft law would repeal the existing law on trade marks (Law 2239/1994) and seeks to improve and modernise trade marks legislation to make it more functional and effective. The new draft law would also transpose European Parliament and Council Directive 2004/48/EC of 29 April 2004 into Greek law.

At the same time it would protect consumers and businesses from imitation products. The penalties on persons infringing the new law would be stricter and for the first time it would be possible to obtain immediate court orders (interim decrees and injunctions) without calling the infringing party to appear before the court, so as to avoid the risk of evidence being destroyed.

The key aspects of the new draft law on trade marks are outlined below:

1. Modernisation of trade marks law by introducing arrangements which make the trade mark registration procedure more flexible and by accelerating procedures. This will be achieved by:

Allowing registering parties to appoint a joint representative for several of them.
Registering trade marks in the trade marks register without requiring an irrevocable decision to have been issued beforehand.
For the first time it will be possible to divide up trade mark declarations or registrations in order to make the process easier.
The deadline for filing caveats is reduced from the current 4 ½ months to just 3 months.
Four additional divisions of the Trade Marks Administrative Board are to be set up, making a total of 14, thereby reducing the time required before decisions are issued. At the same time the competence of the Board is also extended to cover examination of international and Community trade marks being converted into Greek trade marks. The provisions of the draft law also state that members of the Board must be graduates of universities in order to ensure that the Board is staffed by better quality officials.

2. Depositors / proprietors will be granted additional protection by Directive 2004/48/EC being transposed into national law. That Directive bolsters the level of legal protection afforded to proprietors of intangible goods, including the rights associated with a trade mark. Its key provisions are outlined below:

It requires a return to the previous situation so that the rights of applicants which were lost due to force majeure are restored to their previous state.
Injunctions can be rapidly obtained in order to avoid the risk of evidence being destroyed.
The court can order the infringing party to disclose bank, financial or commercial documents relating to the issue, where it considers that necessary. The court can also access that information provided that it ensures that confidential information is safeguarded.
The loss incurred by the proprietor can be calculated using the following methods:

- by calculating the profits accruing to the party unlawfully using the trade mark.

- by determining the amount which the person who unlawfully used the trade mark would have paid if he had requested a licence from the proprietor to use it.

Reputation marks are afforded the protection of criminal law and the penalties are now more severe.
Protection is also extended to cover third parties and middlemen used in the trade mark infringement.

3. Issues relating to the interface between international, community and national trademarks are also addressed. The draft law includes provisions on the conversion of Community or international trade marks into national ones, and recognises and protects the priority of national marks, without any further financial cost. It also allows national trade marks to be replaced by international ones.

4. The protection afforded to consumers is extended since they can now seek recourse against trade marks which may be misleading. At the same time, final court rulings will be publicised so that consumers and businesses are more aware and can take appropriate precautions.

Full text is not available in English. For further information please contact Vassilogeorgis and Partners Law Firm at info@vlawyers.gr