The purpose of this article (see Part 1 here) 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.
A third party is using a sign that is identical to or significantly similar to my trademark. What can I do?
There are several options. The most common—and most cost-effective—is to start with a cease-and-desist letter. Then, if there is no compliance, we will file a motion for preliminary injunctive relief requesting a temporary order so that within the next 2–3 days (often this will happen the very next day—it depends on the court) the infringement ceases and we safeguard our interests. If the third party has registered a trademark, it will also be necessary to file an application for cancellation (application for trademark invalidation) before the Administrative Trademark Committee (ATC). We have said before that trademark registration does not, on its own, provide absolute protection if it has not been preceded by a proper legal review. In fact, it may even create a false sense of security that encourages investment in a trademark which, ultimately, will benefit a third party.
Finally, another option is to initiate criminal proceedings. The strategy devised in each case will be tailored to the circumstances of the specific case and aligned with the trademark owner’s objectives. This is the correct approach. Every solution is unique, just like every case.
I neglected to register my trademark. Does that mean I’m not protected? Can any third party register my trademark and now own it?
Trademark registration is one of the steps an entrepreneur must take even before launching their business. By registering a trademark—always following a proper legal review—one lays the solid foundation upon which to build their hard work and efforts.
However, the truth is that trademark registration is not the only way to establish exclusive rights to a specific mark. Such rights can also be established through use or dissemination in commerce—in which case we are referring to rights under the substantive system. Conversely, if registration is chosen, we are talking about a right under the formal system. The reason for the terminological difference is straightforward: while under the substantive system we examine the substance of the case, i.e., the actual facts (was there genuine use? was it established in trade?), in the registration of the formal system we limit ourselves solely to the formal act of registration.
This observation alone explains why trademark registration establishes a solid foundation, whereas the exclusive right under the substantive system will always remain open to challenge by anyone—it will need to be proven anew in each dispute separately. Furthermore, the trademark registrant is supported by procedural “facilities” that are extremely critical in the event of a dispute, which provide them with “additional tools” to defend their position (for example, the presentation of “counterfeit” products bearing the trademark or the presentation of accounting records proving the opposing party’s profits from trademark infringement and the corresponding award of damages).
However, the advisability of trademark registration is also evident from the following: while an unregistered mark is protected (if protected—see the conditions outlined above) under the provisions of the law on unfair competition (Law 146/1914), trademark registration also provides us with the additional protection of Law 4679/2020 on national trademarks.
Of course, we still have the protection of the Unfair Competition Act, but the broader protection offered by the Trademark Act will almost always be chosen. Thus, registration opens up a legal landscape with a wealth of benefits and opportunities, as well as more specific criminal offenses; if one exploits these strategically and correctly (this is where the great importance of courtroom experience comes in, which must be combined with a solid knowledge of trademark law) can make one’s trademark truly inviolable.
Therefore, it would be misleading to say that exclusive rights are established only if you choose to register a trademark. We strongly recommend, however, acquiring rights through the formal system (trademark registration). You can read the reasons here as well.
What should I keep in mind when creating the sign I intend to register as a trademark?
First, when creating a mark for registration in the Trademark Register, we must ensure we take into account the so-called absolute grounds for refusal. These are examined by a competent official of the Trademark Directorate, and provided none of them apply, our trademark is published. Several of the absolute grounds for refusal are quite technical and require specialized legal knowledge. Limiting ourselves to the most straightforward of these, we could refer to those in Article 4(1)(b) and (c) of Law 4679/2020, according to which “Signs shall not be registered as trademarks, or if registered may be declared invalid, if they [...] lack distinctive character,
(c) consist exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the product or provision of the service, or other characteristics of the product or service; d) consist exclusively of signs or indications that have become customary in everyday language or in the legitimate and established practices of trade”.
If the Examiner approves the trademark (i.e., determines that the necessary formal requirements are met and there is no absolute ground for refusal), the trademark application is published. From the date of publication and for three months, our trademark may be challenged by third parties on any grounds (e.g., either for absolute grounds for refusal that the Examiner failed to identify, or for relative grounds for refusal, e.g., because it is confusingly similar to their right).
Therefore, in light of the relevant grounds for refusal, we must also consider the possibility that it resembles another mark to a degree that creates a risk of confusion (or even if it infringes a reputation mark—see here). A specialized trademark attorney will focus on the relevant details and elements that give rise to such a risk and will highlight them, while also suggesting modifications that would satisfy court precedent so as to avoid a finding of likelihood of confusion. All of this, of course, will be based on previously issued court rulings on similar cases, both from national courts and EU courts, as well as on decisions by the EUIPO. The guidelines issued by the EUIPO will also be critical.
If this period expires or if any third-party objections are rejected, the trademark is registered. We now have a trademark (but this does not mean the trademark is unassailable—see the question “I have a trademark. I registered it in the Trademark Register. Am I protected?").
How long does it take for the registration to be completed and for me to become the trademark owner?
There is no specific timeframe within which anyone can assure you that, after submitting a trademark application, you will have rights to your trademark—that is, that the registration will be granted. This is because it is unknown when the Examiner will review your trademark (the Examiner reviews it for certain grounds for refusal—the so-called absolute grounds for refusal). Subsequently, if they determine that no such grounds exist, they publish the trademark, and third parties then have three months to oppose it (for any reason, and especially if they believe it infringes on their own rights, e.g., to a trademark due to a likelihood of confusion). If the three-month period expires without an “opposition” being filed, then the trademark is deemed registered. However, if an opposition is filed, registration is contingent upon the opposition being rejected. If the opposition is upheld, the prospective trademark owner may appeal to the Administrative Courts to seek redress. In that case, registration will take place once the court decision becomes final. For all these reasons, it would be incorrect to refer to a specific time period during which the interested party will have rights to the trademark.
However, the date of filing the application (which we naturally know) is ultimately decisive for the following reason: According to Article 21(3) of Law 4679/2020, “a trademark that has been accepted is deemed to have been registered as of the date of filing of the application.” Therefore, since registration is retroactive to the date of the application, when the registration is ultimately completed is not as important as the date the application was filed.
* 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).»