The purpose of this article (Part A and Part B) is to explain, in simple terms and in a question-and-answer format, why trademark registration is a highly advantageous option for entrepreneurs—and, in the case of Greece, at a very low cost. We present interesting examples—which always help with better understanding—and draw the attention of interested parties to potential areas of risk.
Is trademark registration ultimately in my best interest?
In recent years, there has been a rapid increase in trademark registration applications. At the same time, even the largest companies consistently spend millions on building and protecting their trademarks. Of course, none of this happens by chance.
Trademark registration provides the necessary framework within which a company’s business efforts and investments can be protected and bear fruit. In Greek legal scholarship, there has been discussion of “securing business performance.”
It is wise for trademark protection to be placed high on a company’s list of priorities. A good product or service feeds into and is fueled by the strength of the trademark that accompanies it. This is a mutually beneficial and “commercially sustainable” process: the good product builds the brand, which in turn provides an immediate boost “from day one” to every new product; at the same time, if the new product lives up to the brand’s reputation and is good, it will add prestige to the brand, which will then support the new products with even greater intensity.
We can liken this entire mechanism to a closed loop with zero “friction,” zero losses, and maximized benefits. Consider what would happen if a third party registers a specific mark that infringes on your products before you do. All your efforts and the positive impressions you’ve built up would ultimately benefit someone else.
And in the event of a legal dispute, if you identify a third party infringing your trademark, the party with the registered trademark is favored by the provision of evidentiary advantages and additional “tools” during the trial process, which are granted by the new Law 4679/2020.
In fact, as officially established by a study conducted by the legislative drafting committee for the new Trademark Law (Law 4679/2020) in countries with populations and economic sizes comparable to those of Greece (e.g., Portugal, Hungary, Denmark, the Czech Republic, Ireland, Norway), the fees for trademark registration in Greece are the lowest: 100 euros for registering a trademark for one class of goods/services.
For a multitude of reasons, many of which you can find in our articles, trademark registration ultimately proves to be an extremely beneficial move for a business. That said, however, improper registration—that is, trademark registration without prior appropriate legal review—can cause a series of problems rather than actually making things easier for us (see below).
What is a trademark, and what can I register as one?
According to Article 2 of Law 4679/2020, a national trademark may consist of any signs, in particular words, including personal names, or designs, letters, numbers, colors, the shape of the product or its packaging, or sounds, provided that such signs:
(a) are capable of distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) can be represented in the register in a manner that allows the competent authorities and the public to clearly and precisely identify the scope of the protection granted to the proprietor.
Thus, beyond word or figurative marks with which the average businessperson is perhaps more familiar, the following have been accepted as trademarks, for example: the shape of Guerlain’s lipstick (see here), the color magenta (Pantone Rhodamine Red U) for the telecommunications company T-Mobile (see here), and the distinctive shape of the front grille of Jeep-Chrysler vehicles.
Moreover, trademark protection can also safeguard videos and sounds (Tarzan’s famous cry is protected as an EU trademark). The well-known chef Nusret Gökçe (Salt Bae) has registered the motion with which he sprinkles cooking salt on meat as a trademark. Twitter Inc. has registered a video as a trademark, as have Cartier International AG, Dropbox Inc., and the parent company of Galeries Lafayette.
However, there is also the option to register a multimedia trademark, i.e., one that includes both visual and audio elements. For example, Netflix (Netflix Inc.) has registered a multimedia trademark since 2020, as has La Liga (Liga Nacional de Futbol Profesional).
Am I protected forever? In which regions?
Trademark protection lasts for 10 years from the date of filing the application. After that, it can be renewed by paying the corresponding fee. In practice, protection can be provided indefinitely. As for the areas of protection, it depends. The available options for trademark registration are as follows: national trademark (protection in Greece), European Union trademark (protection in all EU countries), international registration (protection in a specific country or countries—the usual choice when exporting to the U.S., where contracts with importers require trademark registration with the USPTO—United States Patent and Trademark Office).
Why do I need the help of a trademark specialist before registration? Why not do it myself or with the help of a cheap service provider?
Sometimes we read that trademark registration requires a lawyer, without whom it is impossible to proceed. However, this is not true. Trademark registration can easily be done by anyone (i.e., even the entrepreneur themselves) electronically (using TAXIS codes) or via a paper form. The involvement of a lawyer is required only when filing applications (e.g., opposition, cancellation request, revocation request, etc.) before the Administrative Trademark Committee (ATC) and, of course, for proceedings before the courts.
However, the most advisable option is to seek advice from a professional specializing in trademark law with a solid understanding of the case law and practices of both Greek and EU authorities. The reason is that even if a trademark is registered in the registry, the trademark owner is not safe. They remain vulnerable to aggressive actions by third parties (e.g., a request for cancellation, a lawsuit for damages, and criminal charges for violating criminal provisions). In fact, a trademark registration that ultimately infringes on third-party rights creates a false sense of security for the trademark owner, which ultimately proves dangerous (see below). In other words, a registration without prior legal advice will very often, for a number of specific reasons, be equivalent to “non-registration”—or even something worse (see false sense of security, which ultimately proves dangerous).
The reasons why you should have a legal advisor specializing in trademark law on your side become clear in the next question.
I have a trademark. I registered it with the Trademark Registry. Am I safe?
No. Registering a trademark does not guarantee that third parties will not take action against the trademark owner, seeking the cancellation of the trademark, compensation, or even the imposition of criminal penalties.
This is because, under the new Law 4679/2020, the examination conducted by the Administration prior to registration is limited to only a small portion that could give rise to issues in the future. On the other hand, what creates the best possible conditions for the sign holder to operate without issues is seeking advice from a specialist beforehand. Thus, even if a third party were to challenge the trademark owner, the preparatory work and the identification of “areas of risk” would substantially increase the likelihood that third-party claims would be rejected overall.
For these reasons, it is often said that registering a trademark without first undergoing a thorough legal review and seeking legal advice constitutes a major “trap” for the trademark owner: this is because the owner, having acquired the trademark rights, makes investments and expands their business under a mark that may, however, be extremely vulnerable to aggressive actions by third parties. To give a simple example: if the trademark is invalidated, all those investments will have been made for nothing. It’s like carrying out a costly renovation on a house we’re renting for a certain period—the renovation is done, but in the end it doesn’t go to us, but to someone else. At the same time, that “someone else” could also sue us for damages (or even initiate criminal proceedings) because we carried out the renovation without first asking them.
*Yannis Psarakis (Ph.D. candidate, Law School of the National and Kapodistrian University of Athens – M.A. III) is an attorney, partner at the law firm Psarakis | Kefalas (www.psarakislegal.com), founder of Psarakis Trademarks (www.psarakis-trademarks.com), and administrator of the IP portal “The Trademark Hoop” (www.thetrademarkhoop.com).