The Law 4679/2020 on Trademarks (Government Gazette A’ 71/20.3.2020) was published, implementing Directive (EU) 2015/2436 on the approximation of the laws of the Member States relating to trademarks and Directive 2004/48/EC on the enforcement of intellectual property rights, along with other provisions. The Law transposes Directive 2015/2436/EU into national law, abolishing Articles 121 to 182 of Law 4072/2012 (Article 89 §1 of Law 4679/2020). It is noted that the majority of its provisions apply retroactively as of 14 January 2019, in order to ensure temporal alignment with the deadline for transposition set by the Directive (Article 54).
The new law introduces legislative definitions, namely: (1) national trademark, (2) EU trademark, (3) international trademark, (4) international registration, (5) International Register, (6) Directorate of Trademarks, (7) Examiners, (8) Researchers, (9) Registrars, (10) Administrative Trademark Committee, (11) Trademark Register or simply Register, (12) trademark application, (13) registration, and (14) claim to international priority or right of priority in accordance with Article 4 of the Paris Convention of 1883 (Law 213/1975), or an international registration under Articles 3 and 4 of the Madrid Protocol of 1989. Furthermore, the new law broadens the types of trademarks that may be registered by introducing the institution of the “certification mark”. Moving beyond the traditional form of trademarks and in response to the need to protect new types of marks (such as sound marks, colour marks, three-dimensional (3D) shapes, and even scent marks), the requirement of graphic representation is abolished, thereby expanding the categories of registrable trademarks. These expressly include position marks, motion marks, multimedia marks and hologram marks (Article 2 §4 d’, h–i), as well as any other type of mark that can be represented in a manner which enables the competent authorities and the public to determine clearly and precisely the subject matter of the protection granted to its proprietor (Article 2 §§2 and 5).
Article 2 of the law sets out the possible forms of representation of a trademark. Such representation may take the following forms (para. 4): (a) word mark, (b) figurative mark, (c) three-dimensional mark, (d) position mark, (e) pattern mark, (f) colour mark, (g) motion mark, (h) sound mark, (i) hologram mark and (j) multimedia mark. In case of discrepancy between the representation of a mark and its description, the latter shall prevail.
Pursuant to Article 5 §5, the researcher of the Directorate of Trademarks identifies signs which, in his or her judgment, present similarities with earlier trademarks and is obliged to inform the proprietor of the earlier mark by any appropriate means. In any case, proprietors remain responsible for monitoring the website of the Ministry of Development and Investments in order to proceed with filing an opposition against the decision of the examiner accepting the trademark application. Furthermore, pursuant to Article 25, an opposition may be filed against a decision of the Examiner of the Directorate of Trademarks, or of the Administrative Trademark Committee, or against a final decision of the administrative courts accepting the trademark application, within a period of three (3) months starting from the day following the publication of the decision on the website of the Ministry of Development and Investments, on the ground that the registration conflicts with one or more of the grounds set out in Article 4 or in paragraphs 1 and 3 of Article 5.
Finally, any person who uses a trademark in violation of the relevant provisions and without the consent of the rightful proprietor may make use of the legal remedies provided by law and seek cessation of the infringement and its omission in the future. According to Articles 38 §12 and 47 §4 c’, a defendant in trademark infringement proceedings may file a counterclaim requesting revocation or invalidity of the trademark on which the action is based, whereas previously such claims could only be raised within administrative proceedings before the Administrative Trademark Committee (see Articles 158 §1 and 162 of Law 4072/2012). Jurisdiction lies with the Single-Member Court of First Instance regardless of the value of the dispute, while cases involving claims of unfair competition or infringement of distinctive signs (Articles 1 and 13 of Law 146/1914) fall under the jurisdiction of the Multi-Member Court of First Instance. Pursuant to Article 42 of the new law, interim measures may be granted, while requests for proof of use may be submitted orally during the hearing. Moreover, the right holder may also apply for precautionary seizure or temporary delivery of goods bearing the infringing mark. Pursuant to Article 31, recourse to mediation is expressly provided. After filing an opposition or an application for revocation, invalidity or intervention before the Administrative Trademark Committee, the parties may submit a request to the Directorate of Trademarks to enter into mediation proceedings, which suspends the procedure before the Committee. Changes are also introduced regarding the fees for trademark registration. The fee for filing a national trademark in paper form increases by €10 (from €110 to €120), while the fee for electronic filing is reduced by €10 (from €110 to €100). Similarly, the fee for renewal of trademark protection filed in paper form increases by €20 (from €90 to €110). Furthermore, the fee for filing a trademark resulting from conversion of an EU or international trademark or from division is increased, while no fee is provided for changes of name, legal form, residence or registered office, for recording limitations of trademark rights or for the transmission of an EU trademark application (Article 87 §1), in contrast to the provisions of the previous law (Article 179 of Law 4072/2012).