Trade Mark Litigation

Malamis & Malamis Alkisti-Irene Malamis

1. SOURCES OF LAW

1.1 What are the principal sources of law and regulation relating to trade marks and trade mark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties).

The main sources of law in relation to trade marks and trade mark litigation in Greek law are:

• Law No 2239/1994 ‘On Trade Marks’, which sets the substantial law on trade marks, trade mark prosecution and litigation;
• The ‘Code of Administrative Court Procedure’ which amends and prevails over Law 2239/1994 in respect of the procedure for filing recourse actions against refusal decisions of the Trade Marks’ Administrative Commission as well as the Court procedure in front of both the Administrative Court of First Instance and the Administrative Court of Appeals (prosecution);
• First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to Trade Marks (89/104/EEC);
• Law 2783/2000 on the ‘Ratification of the Protocol relative to the Madrid Agreement on the international registration of trade marks’;
• Ministerial Decision FEK B’ 31/18.1.2001, No K4/-307on the ‘Implementation of the Protocol relative to the Madrid Agreement on the international registration of trade marks which was ratified with Law 2783/2000’;
• Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark;
• Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights.

An international treaty that may apply to trade mark litigation cases in Greece includes the European Convention on Human Rights (ECHR) in so far as recent jurisprudence has recognised that intellectual property is recognised as a form of property protectable according to Article 1 of the 1st Additional Protocol of the ECHR.
Relevant Community legislation that may apply directly to trade mark litigation cases include the Regulation on International Jurisdiction on the Recognition and Enforcement of foreign judgments in civil and commercial disputes (Regulation (EC) 44/2001 of the Council).
Additionally, the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights), which has not yet been transposed in Greece in respect of trade marks may apply directly to trade mark litigation cases. More specifically, after the 29 April 2006 deadline for incorporating the said Directive’s provisions parties to any trade mark litigation dispute may request from the Greek Courts permission to apply directly the provisions of the Enforcement Directive in Greece. This gives a new perspective to the enforcement of trade mark rights in Greece (see below).
Finally, in the cases where existing legislation on trade marks and trade mark litigation is vague or needs more interpretation, like in the case of ‘bad faith’, ‘due reasonable care’, ‘abuse of right’ etc, the precedents set by the Courts are in order of importance starting with the European Court of Justice and the European Court of First Instance and then the Greek Courts: Supreme Court (Areios Pagos) and the Supreme Administrative Court (Council of the State), which set secondary sources of law.

1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?

As a general principle of Greek law, the importance of the different sources are graded as follows, in the case of conflict:

• The Greek Constitution, then Greek national laws and other legislative acts [Presidential Decrees (PD) and Ministerial Decisions (MD)], but the latter must be issued following authorisation by a relevant law; lacking such authorisation, the validity of a PD and an MD may be contested.
• International treaties that have been ratified by national law supersede national laws, according to the Greek Constitution. The latter applies to the provisions of the EPC for instance, but also to other international treaties that may apply to the law of trade marks.
• EU legislation supersedes national law and may be applied directly, without being ratified by national law.

One issue on which there are currently heated discussions is whether EU legislation supersedes the Greek Constitution – the Courts have so far rejected this approach.

2. COURT AND ADMINISTRATIVE SYSTEM

2.1 Can third parties oppose/request cancellation of a national or supranational (eg Benelux, Madrid Agreement and Protocol, Community Trade Marks) trade mark application/registration in your country? If so, on what grounds? Please briefly describe the opposition/cancellation procedure(s).

Third parties may oppose a Greek national trade mark application or a Madrid Protocol extension application in Greece and also request cancellation of a registered Greek national trade mark or Madrid Protocol extension registration both on relative and on absolute grounds of refusal. The grounds for refusal or invalidity articles 3 and 4 of the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to Trade Marks (89/104/EEC) are followed almost literally in article 3 of Greek law No 2293/1994.
Oppositions and cancellation actions are brought in front of the Trade Marks Administrative Commission (TAC) which seats at the TM Registry (Ministry of Development) by anyone that can justify a legal interest.
Recourse against decisions of the TAC on opposition and cancellation actions, as well as against examination decisions rejecting or accepting a trade mark application may be filed in front of the Athens First Instance Administrative Court.
Appeals against the decisions of the Athens First Instance Administrative Court may be filed in front of the Athens Court of Appeal.
Further appeals against decisions of the Athens Court of Appeal may be taken on specific grounds only to the Supreme Administrative Court of Appeal (Council of the State).

2.2 In which courts are trade marks enforced? Are they specialised trade marks courts? If not, what level of expertise can a trade mark holder expect from the courts?

Trade marks are enforced in the civil courts. Law No 2943/2001, article 9, which came into force on 1 January 2002 in its Chapter C, entitled ‘Sections for Community Trade Marks’ set down that trade mark related disputes are to be judged by the special sections that are competent to hear disputes on Community Trade Marks. These Courts are the District Courts of Athens and of Thessaloniki only, while cases are divided between the above two Courts depending on the territoriality of the dispute. These provisions apply for lawsuits filed after 1 January 2002.
According to article 10 para 3 of the above law, the above Sections of the District Courts of Athens and of Thessaloniki are served by judges with a specialisation or special experience in trade mark and patent matters in general. As a result, the Courts deciding on trade mark law acquire proficiency through practice.

2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?

Where a national Court is competent in a trade mark litigation dispute, it shall not be bound by a decision handed down by a foreign Court.
On the other hand, Greek courts are bound by foreign court decisions that constitute a precedent and are irrevocable according to the law of that foreign country by article 323 of the Greek Civil Procedure Code, provided however that certain prerequisites are met. Namely, this is the case if the said foreign court was competent under Greek law to hear the case, if the defendant was not unjustly deprived of the right to be heard and if there is no different Greek Court decision constituting a precedent under Greek law.
As a general rule, Greek Courts are bound by decisions of other courts that may set a precedent according to the Civil Procedure Code, articles 321 to 334. This is the case if the said prior decision was decided on the same dispute in substance (same historical and legal basis) between the same parties (or their successors).

2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or national or supranational government agency shall they be brought (eg the national Trade Mark Office or the OHIM in Alicante)?

In respect of Greek national trade mark applications as well as Madrid Protocol registrations extended in Greece which are handled just like Greek national trade mark applications, the Greek Trade Mark Office via the TAC conducts a full examination on the registrability of trade marks, both on the absolute and relative grounds for refusal set by law. The applicant may argue on the citations of the examination in front of the TAC and may contest the decisions of the TAC pursuing prosecution in front of the Administrative Courts as described above, because the decision of the TAC is considered an administrative act. Under article 32 of Greek trade mark law No 2239/1994 it is clearly stipulated that Civil Courts have no competence whatsoever. Such competence resides with the TAC and the administrative courts and the irrevocable decisions of the administrative courts must be followed compulsorily by the civil courts.
As a result of the above, civil courts are not competent to deal with invalidity, which is an issue that is reserved for the TAC and the administrative courts and should be brought in separate proceedings in front of those courts.
As an exception to the above, in actions of infringement of Community Trade Marks that are heard in the local Community courts, actions for invalidity may also be heard, based on the Council Regulation (EC) No 40/94.

2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?

Lawyers that are members of the respective Bar Association of the competent Court dealing with the trade mark litigation may represent the parties in trade mark litigation as well as in trade mark prosecution in front of the TAC and the Administrative Courts. A lawyer who is Bar Member from Athens may also represent parties in front of the Thessaloniki Court and vice versa, provided that a local lawyer is also present to ‘legalise’ such representation.

2.6 What is the language of the proceedings? Is there a choice of language?

The language of the proceedings is Greek. There is no choice available.

3. SUBSTANTIVE LAW

3.1 To what extent are unregistered trade marks protected under your country’s laws?

Unregistered trade marks are protected in that they can be cited as relative grounds of refusal of posterior trade mark applications subject to their registration.
Besides, rights to a non-registered trade mark or to another sign used in the course of trade that were acquired prior to the date of application of a subsequent trade mark and that qualify as distinctive signs protectable under Unfair Competition Law (law No 146/1914) are considered as relative grounds of refusal of posterior trade mark applications and may, thus, form basis of an opposition or cancellation action by their holder.
Further, as a general principle in trade mark law, a trade mark is protected against infringement under the provisions of trade mark law only from the moment that it is registered. During the process of prosecution of a trade mark and before this is registered, it is protected under the provisions of Unfair Competition Law No 146/1914, articles 13-15 and article 1) if applicable.

3.2 How is trade mark infringement assessed? Does protection extend to translations or to conceptually identical but graphically different trade marks?

According to article 18 paragraph 3 of Greek trade mark law, a trade mark holder may prohibit third parties from using in transactions signs that constitute an imitation or alteration of its trade mark according to the said legal provisions on relative grounds of refusal (article 4 para1 of the same law).
Therefore, in assessing trade mark infringement, judges need to assess whether:

• the signs compared are identical and distinguish identical goods/services; or
• the signs compared are identical or similar and distinguish identical or similar goods/services and there is a likelihood of confusion on the part of the public as to the origin of the goods/services from the coexistence of the said signs; or
• the prior trade mark is a famous trade mark, irrespective of the fact that there is no similarity between the products/services distinguished by the posterior infringing sign.

In the case of similar trade marks, the criteria to be met for it to be decided that there is trade mark infringement is that there is the likelihood of consumer confusion with the infringing sign. Such likelihood of consumer confusion is assessed in the total impression (visual, acoustic or conceptual) conveyed by the marks, irrespective of specific differences. This means that graphical differences between marks may be considered substantial only when they are so important that they lead to absence of the likelihood of consumer confusion.
Protection against infringement for a word extends to both the Greek and the Latin alphabet script of the same word, as construed by jurisprudence.
A translation or conceptual equivalent of a mark would be protected as well only if it can be sustained that this equivalence/identity is recognised by the average Greek consumer. Practically, this would be the case for a limited number of words, which have become a part of Greek vocabulary, or at least are widely used, and not to all translations.

3.3 Are there other causes of action for trade marks (eg dilution)?

In the case of a famous trade mark, infringement actions can be brought for dilution.

3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?

A trade mark can be enforced against any use in transactions (in the course of trade), including use as a domain name, a trade name, a pseudonym or other distinctive signs.

3.5 On what grounds can a trade mark be invalidated?

A trade mark can be invalidated on the same grounds on which it can be opposed (relative and absolute grounds of refusal and filing in bad faith).
Additionally, a trade mark can be invalidated (cancelled) due to:

• non-use within five consecutive years from registration of such mark;
• cessation of the business of the trade mark owner within a period of five years;
• the mark becoming of common use (generic), or the usual commercial name of the products/services that it distinguishes, due to action or lack of action, of its owner; or
• use by the owner or with his consent leading to the possibility that consumers will be deceived especially due to the nature, the quality or the geographical origin of the products/services.

3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?

A trade mark must be used in order to avoid being cancelled due to non-use. Greek trade mark law requests use to be ‘substantial’. This has been construed by jurisprudence as actual use, while preparation for use is not considered to be proper use.

3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?

There are certain restrictions to the protection against trade mark infringement that an alleged infringer may claim, according to article 20 of Greek trade mark law no 2239/1994. More specifically:

• The right conferred by a trade mark to its owner may not give him the right to prohibit third parties to use in the course of a trade their name, company name and address as well as signs relative to the kind, the quality, the destination, the quantity, geographical origin, the production year of the product or the year or supplying of the service or other characteristics, as well as using the trade mark itself, where it is necessary in order to indicate the intended purpose of a product or service, in particular as accessories or spare parts. A prerequisite for the above is that such use is in accordance with honest practices in industrial or commercial matters. However, Greek law goes further than Directive 89/104/EC in that it requires that this use should NOT BE MADE in the form of a trade mark.
• The trade mark shall not entitle the proprietor to prohibit a third party from using in the course of a trade an earlier right which only applies in a particular locality if that right is being exercised within the territory in which it is recognised.
• The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the EU under that trade mark by the proprietor or with his consent. This does not apply in the case where the condition of the goods is changed or impaired after they have been put in the market.

3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?

If the specific facts in that particular case form the basis of a violation of antitrust provisions, then it is possible that the trade mark holder is exposed to liability for an antitrust violation.

3.9 Can a court only partially invalidate a trade mark?

The Court may partially invalidate a trade mark if the grounds of the invalidation/cancellation action are accepted only in respect of part of the products/services distinguished.
Besides, a third party may file an invalidation/cancellation action only against part of the products/services distinguished.

3.10 Is it possible to amend a registered trade mark during a lawsuit?

It is not possible to amend voluntarily a trade mark application after it is filed.

3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder, or for some other reason (eg expiry of time limit)?

Under article 281 of the Greek Civil Code the exercise of a right may be denied if it is exercised in a way that constitutes an ‘abuse of right’. Jurisprudence has dictated that this is particularly the case where a long time has lapsed during which the trade mark owner was aware of the infringement and did not react. The time needed here is less than the time for the prescription of the right, but there should be additional circumstances, such are where the infringer is lead to believe that the trade mark owner will not assert its rights and thus, proceeded to make investments etc due to this belief.

3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?

Trade marks are mainly protected by the special provisions of the Greek Law 2239/1994, however, this does not exclude the protection based the Unfair Competition law No 146/1914.
Unfair competition provisions are applied in a complementary way. In particular in order for a trade mark to be protected under Unfair Competition law, there must be a competitive incentive, danger of consumer confusion, as well as additional grounds that make the infringement in bad faith.
If a trade mark is not yet registered, protection based on Unfair Competition law is the only protection available against infringers because trade mark law protection starts to apply from the moment of registration of a mark.

4. PARTIES TO LITIGATION

4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?

The right to sue for trade mark infringement is reserved by law to the trade mark right holder (regardless of the way of acquisition of the said rights – either through filing or following assignment).
The exclusive licensee may also sue provided that he is recorded at the trade mark office.
The mere distributor of the protected goods is not entitled to sue as he is devoid of legal rights on the trade mark. However, the distributor whose business is being harmed by the infringement may intervene in a lawsuit in favour of the plaintiff (trade mark rights holder) and thus, become part of the proceedings.

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?

It is indeed possible for any party to bring a lawsuit to obtain a declaratory judgment on non-infringement. This action must be turned against the trade mark right holder, who must become a party to this lawsuit and may respond by presenting arguments in favour of the declaration of trade mark infringement. The decision of such a lawsuit would be enforceable between the parties to it and would constitute a precedent only between the parties and their successors in title.

4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?

The defendant in a trade mark infringement lawsuit may be the legal entity or the natural person that performs the acts of infringement.
For employees or directors of a legal entity performing the infringement, it is considered that they act on behalf of the legal entity who is held responsible for such behaviour.
However, the directors of the infringing company can be sued personally as parties to the lawsuit only together with the legal entity that they represent. This is the case when the plaintiff asks the Court to order their personal detention as a means to enforce the judgment that shall be issued and thus avoid future infringement.

4.4 Is it possible to add or subtract parties during litigation?

Parties may be added during the litigation in the following ways according to the general provisions of the Civil Procedure Code:
First of all, a third party claiming legal rights in a situation may intervene on its own initiative in the proceedings of a lawsuit which is already initiated (articles 79 to 85 of Civil Procedure Code). This is made in writing through the serving of a special writ in normal procedure lawsuits and keeping certain legal deadlines. On the other hand, in injunction actions the intervention may also be made orally on the day of the hearing.
Further, the defendant may invite to the trial a third party that may have responsibility, ie as importer, or manufacturer of the product sold by the defendant, in an infringement lawsuit (articles 86 to 90 of the Civil Procedure Code). This is particularly done where the defendant has the possibility to ask for compensation from a third party in case he loses the lawsuit. The third party is then bound directly by the results of the lawsuit and may participate in the dispute with full rights.
Besides, anyone justifying legal rights may notify the existence of the dispute to a third party, according to articles 91-92 of the Civil Procedure Code. The third party has then the right to participate in the proceedings but in the case that it does not participate it cannot evoke such non-participation as a basis for filing a recourse (third party opposition) against such decision.

5. ENFORCEMENT OPTIONS

5.1 What options are open to a trade mark holder when seeking to enforce its rights in your country?

The owner of a trade mark may demand from infringers cessation of the infringement and to desist from any future infringement. This right applies to present and threatened infringement of its trade mark rights.
In the case that the trade mark owner can evidence intentional infringement of its trade mark rights, he/she may also ask for compensation.

5.2 Are criminal proceedings available? If so, what are the sanctions?

There are criminal sanctions available for trade mark infringement, according to Greek law, namely imprisonment and monetary fines.

5.3 Are border measures available?

It is possible to file a Request for Customs Intervention for the seizure of goods infringing trade mark rights as provided in Regulation (EC) 1383/2003 with effect throughout the EU. In this case, translations of the foreign language documents should be filed at Greek Customs, so as to inform the authorities of the actual contents of the Customs intervention request.

5.4 To what extent are courts willing to grant cross-border or extra-territorial injunctions?

Courts tend to act within the territory of the dispute. There is no precedent for the Courts to grant injunctions with effect outside of Greece.

5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?

Courts do not recognise the blocking effect of ‘torpedo’ actions abroad.

5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes? How widespread are ADR methods and in which sectors? If arbitration is available to assess invalidity, will your Trade Mark Office recognise and execute an arbitral award declaring a trade mark invalid?

Arbitration is a means to resolve private disputes between individuals which is provided for by Greek Civil Procedure Code. As far as a trade mark dispute is between individuals, ie, in respect of trade mark infringement, then it is possible to use it for resolving such disputes.
Since the Trade Mark Office is responsible for conducting substantial examination, the Trade Mark Office will not recognise an arbitral award declaring a trade mark invalid.

6. PROCEDURE IN CIVIL COURTS

6.1 What is the format of trade mark infringement proceedings?

A lawsuit must be filed at the competent District Court in the form of an introductory writ, which must contain clearly and precisely all the particular facts and elements that constitute the infringement and also the description of the violated trade mark right. Upon filling the lawsuit a hearing date will be set.
A file with full legal arguments, evidence and Affidavits (up to two for each party) must be filled by the involved parties 20 full days before the date of the hearing. Then the parties may within five days file counterclaims and respond to the other party’s arguments and evidence.
At the hearing, which takes place orally, each party may present a witness. Then the parties have eight working days within which they can comment in writing on the arguments raised by the witnesses during the oral hearing.

6.2 Are disputed issues decided by a judge or a jury?

In Civil Courts the disputes are decided by judges only.

6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?

Documents, affidavits and witnesses are widely used in civil proceedings. Several forms, however, must be preserved. All the relevant documents must be dully translated and officially certified (or certified by the lawyer as to their conformity with the original) or must be submitted as originals. Affidavits must be taken in advance of the trial and notice about the affidavit (the name of the witness, his capacity, his residence, the address where the affidavit will be given, date, time) must be given to the other party, or his attorney appointed to receive documents at least 48 hours before the hearing. It is also possible to cross-examine witnesses.

6.4 To what extent is survey evidence used (eg to support acquired distinctiveness, likelihood of confusion)? What is its relevance in proceedings (eg party allegation, evidence)? Who decides which consumers are questioned in the survey (eg the court, court expert)? What level of cost should one expect to incur to carry out a survey? Are these costs recoverable from the losing party?

Survey evidence may be used to support acquired distinctiveness as well as likelihood of confusion. It is considered in the proceedings as an allegation of the party that presents it, but if it is professionally presented and its method and means displayed, it may be considered as evidence by the Court.
It is the party who has ordered the survey that decides who shall be questioned in it; there is no case law where a survey has been ordered by the Court or by a Court expert.
The costs of preparing survey evidence vary widely depending on the amount of work and the particulars of the case. These costs may be recoverable only if they are asked for by the party as part of compensation for the alleged infringement.

6.5 Is evidence obtained for criminal proceedings admissible in civil proceedings, and vice versa?

Evidence obtained for criminal proceedings is admissible in civil proceedings, and vice versa.

6.6 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?

Pre-trial discovery is not permitted by Greek law. An equivalent would be the possibility for the Court to order that either of the parties provide/show certain documents or disclose certain information to the other party.
However, this is made only through special request of the other party, which would include the reasons and name as precisely as possible the documents needed.
This can be made by a special request filed in emergency proceedings (injunction proceedings) and a decision is issued. However, this does not give the possibility to the other party to inspect premises.

6.7 What level of proof is required for establishing infringement or invalidity?

Full proof of the infringement or of the invalidity are required. Only in the case of an injunction action may the Court rely on the probability of the infringement or invalidity.

6.8 How long do trade mark infringement proceedings typically last? Is it possible to expedite this process?

Trade mark proceedings heard at first instance typically last two to three years, whereas proceedings heard at second instance typically last 12-18 months. If there is a postponement during the proceedings at first instance the proceeding may last 15-18 months more. In the case of postponement in the second instance, proceedings may be further delayed for six to nine more months.

6.9 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?

The defendant may ask for a postponement of the trial. However, the Courts are strict about granting even one postponement if the other party does not agree.
Proceedings may be stayed for the following reasons:
As soon as a lawsuit has been filed in a court in Greece and as long as the proceedings typically last, there can be no court hearing for the same issue between the same litigants in any other court in Greece (Code of Civil Procedure article 222, paragraph 1). If during the hearing of a case, a lawsuit/intervention action is indeed filed, the hearing of the second lawsuit is stayed until the hearing of the first lawsuit takes place and a relevant final decision is issued (Code of Civil Procedure article 222, paragraph 2).
Further, trial proceedings may be stayed so as to wait for a decision to be issued on another matter that is considered a prerequisite issue that must be decided before the litigation in question (Code of Civil Procedure article 247). This is particularly so the case of a trade mark infringement lawsuit that must stay until the issuance of a final decision on the invalidity of the trade mark right asserted and filed beforehand.
In order to speed up the proceedings despite the defendant’s delaying practices, a plaintiff must observe legal proceedings and deadlines and be prepared for any such tactics, so as not to be taken by surprise. Thus, the plaintiff will avoid requesting postponements on his own with result of further delay.

7. FINAL REMEDIES

7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?

The owner of a trade mark may in the case of present or threatened infringement demand the cessation of the said infringement and the omission from any infringement in the future. In the case of an international infringement the owner of a trade mark that has suffered damage may demand compensation.
The trade mark owner may also request from the court the publication of the decision in a newspaper, only when the lawsuit has an additional basis in Unfair Competition law provisions.
The destruction of the infringing goods may also be ordered.

7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?

A final decision is effective against the infringer’s suppliers or customers only if the lawsuit was addressed to them too. The decision’ s effects are ‘intra-partes’.

7.3 What monetary remedies are available against an infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?

The Courts may grant only the monetary remedies provided for by law: lost profits, account of profits, moral damages (if one can substantiate such from the trade mark infringement).
Punitive damages are available only if agreed in advance between two parties in the form of a penal clause in contracts.

8. PRELIMINARY RELIEF

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?

It is possible to file a petition for an injunction, with or without a request for a preliminary injunction. Of course certain elements need to be demonstrated (urgency, upcoming damages, probability of infringement of legal rights).
With the injunction petition one may also request the other party to provide information of the sales made of the particular infringing items, so as to prepare the subsequent claim for compensation to be filed with the normal procedure lawsuit. If the other party does not voluntarily provide such data, the Court may be asked to issue such an order towards the defendant.

8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?

This is not forbidden by law, it is indeed possible for a preliminary injunction. However, in recent practice, the Courts always require that the defendant be present or at least legally notified of such discussion.

8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?

The plaintiff is entitled to ask the above with an injunction action. However, in practice the other party is notified of such request at least a few hours beforehand and it is possible that evidence, documents etc will be moved or hidden.
The only possibility for seizing and preserving evidence for trial without warning the defendant would be to ask the Courts to enforce directly the relevant provisions of the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights).

8.4 Can the defendant put the validity of a trade mark in issue in preliminary injunction proceedings?

No, this is reserved to the exclusive competence of the Administrative Courts, while injunction proceedings take place in the Civil Courts, which have no competence on validity issues.

8.5 What is the format of preliminary injunction proceedings?

As already mentioned above, if a request for a preliminary injunction is made, a hearing for the latter will be set within 24-48 hours and the other side will be invited.
A fast oral discussion with the judge takes place, sometimes a witness is also examined, although it is not necessary.

8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?

Affidavits, documents, witnesses and private experts are all used in injunction proceedings, in order to substantiate the rights that must be protected.

8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?

The law (Civil Procedure Code) requires the judge to find it probable that there is infringement.

8.8 How long do preliminary injunction proceedings typically last?

The injunction proceedings may be concluded within one day, the same day of filing of the request. The decision is usually issued right after the discussion, but it may also be issued some time afterwards within the same day or even the next day.

8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?

Following amendment of Civil Procedure provisions, since September 2005 it is now necessary to start main proceedings (a so-called normal procedure lawsuit) within 30 days of the publication of the injunction decision.

9. APPEAL PROCEDURE

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?

The defeated party in main proceedings may file an appeal at the competent Court of Appeals requesting the annulment of the decision issued. The deadline for filing an appeal is 30 days from the day of formal notification of the first instance decision. In the case that the first instance decision is never notified formally, then the absolute deadline for filing an appeal is three years starting from the publication of it.
The condition for filing an appeal is if in the opinion of either party the first instance Court has interpreted wrongly the legal provisions applicable or/and has not taken good consideration of the evidence.
The defeated party in an injunction action has limited possibilities to reverse the decision. This may be done strictly for the following reasons:

• if the losing party has not participated at the injunction hearing and has not been lawfully notified of the time of the hearing; or
• if new elements (facts, legal relations) have arisen, which are either subsequent to the injunction hearing or have only subsequently come to the knowledge of the party concerned.

The avenues available in these cases would be to file a petition for reversal of the injunction decision, based on either of the grounds mentioned above.

9.2 How long do appeal proceedings typically last?

Appeal proceedings as such are expected to last between 10 to 18 months from filing the appeal up to the issuance of the decision.

10. LITIGATION COSTS

10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?

The costs depend on the complexity of the case and of the nature of the infringed rights, that could necessitate extensive elaboration, Court and private experts, multiple hearings etc.

10.1 Are costs recoverable from the losing party?

The losing party is ordered by the court to pay the litigation costs. However the litigation costs awarded by the Courts are always less than the actual litigation costs. Besides, the Court has the right to declare that each party is to bear its own costs, when the outcome of the dispute is uncertain.

11. FORTHCOMING LEGISLATION

11.1 What are the important developing and emerging trends in your country’s trade mark law?

There is a project of amendment of the Greek Trade Mark Law No 2239/1994, however this is not yet deposited to the Assembly for discussion.

11.2 To the extent it relates to trade mark enforcement, please outline any major trade mark legislation in the pipeline.

Major improvements are expected if the Courts start to implement directly the EU Enforcement Directive, or when specific provisions will be incorporated in Greek law so as to implement these provisions.

12. USEFUL REFERENCES

12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.

Classic references for trade mark law and litigation in Greece are the following:

• Thanasis Liakopoulos Intellectual Property Part I , third edition, Athens 1993, published by P. Sakoula Bros
• Thanasis Liakopoulos Intellectual Property Part II , third edition, Athens 1993, published by P. Sakoula Bros
• K. Rokas Trade Mark law, 1978
• N.Rokas Trade Mark law, 1996 – a commentary of law 2293/1994.