NEW HARMONISED TRADE MARK LEGISLATION
IN GREECE No. 2239/1994 re: “Trade Marks”

After a four years intensive work of an experts' Committee a new trade mark law, in harmonisation with the Directive 89/104/EEC, was enacted in Greece on the 15th of September 1994 under the No 2239/1994 re: “Trade Marks” to be in force as from the 1st of November, 1994 which modifies and modernises a fifty five years previous trade mark legislation.

The Partner and Administrator of our Firm Mr. Thanos Masoulas was a Member of the Committee of Experts, which prepared the Draft Law and the “raporteur” of the Law (Κείμενο Νόμου). He also drafted the Introductory Report to the Law (Κείμενο Εισηγητικής Εκθέσεως).

The new law has followed in principal the successful system of the previous legislation, but at the same time has included any and all guidelines of the harmonisation, the results of half a century jurisprudence and the spirit of the current developments in the international trade and industry.

The main guidelines of the new legislation are the following.

1. Security in the trade

1.1. A Committee, named “Administrative Trade Mark Committee” is responsible for checking both the absolute and the relative bars and accepts an application to be matured to registration if no absolute or relative bar occurs.

1.2. A third party opposition is provided within a period of four months, starting from the 16th of the month following the date of publication into the Gazette. If no opposition occurs the trade mark is registered. Thus within a short time, of approximately 10 months, if no bar or opposition occurs, the registration is granted and gives the absolute right to the proprietor to properly use, defend from infringements and easily invest on the trade mark.

1.3. Nevertheless for covering eventual mistakes and/or omissions, as well as bad faith during the procedure, a cancellation procedure is provided which at any case has only an -ex nunc- effect, i.e. after a final decision will be issued, which lasts long before been issued and does not surprises the registered proprietor.

1.4. A quick procedure has been provided before the Ordinary Civil Courts to grand a proper protection against infringements without the burden of proof of the likelihood of confusion on identical marks and similar products.

2. Link of the trade mark to the Proprietor

2.1. The previous legislation used to consider the likelihood of confusion as a matter of public order and the link between the trade mark and the proprietor was very strong, with the exception of the user's agreement, the parallel application and the collective marks, which nevertheless were allowed after severe control of the Committee.

Under the new legislation the likelihood of confusion is a private matter falling under the discretion of the proprietor.

As a consequence to that :

2.1.1. A letter of consent is for the first time acceptable in this country and focuses similar marks, once for the identical a user's agreement can be granted.

2.1.2. The transfer of the trade mark has been absolutely disconnected from the enterprise. The simultaneous transfer of the goodwill lies absolutely on the discretion of the contractual parties.

2.1.3. The spirit of the new law is that the proprietor is registering a trade mark either to use it personally, or to grant the use to somebody else by recording a user's agreement with the right of sub-license.

Without a recorded user's agreement nobody else, apart from the proprietor, may use the trade mark even with the consent of the proprietor.

Therefore it is allowed the marks to be centralised to holding companies, which may grand licence agreements to the producing companies.
Thus the trade mark is not necessarily committed with the operational risk of an operating company and does not follow its risks.

2.1.4. I have to notice here, that a user's agreement with the relevant operating companies has to be recorded, otherwise the trade mark runs the risk to be cancelled on the ground of non use.

2.1.5. A numerous of procedural items following the fifty five years experience have been satisfactorily regulated to facilitate the easy going of such a complicated matter.
 

3. Powers of attorney.

It is especially worthwhile to mention, that the powers of attorney for all acts and procedures before the Committee need no legalisation any more. A simple signature is sufficient.
But we have to make clear that :

a) All deeds and certificates need an apostille (Hague Convention 1961) .
b) The powers of attorney for attending Hearings before the Ordinary Administrative Tribunals need an apostille.

In summary:

1. A letter of consent on similar trade marks (not identical) is acceptable.

2. For the recorda of a parallel application or a user's (licence) agreement no severe economical link is required. The Committee checks only the issue of “public interest” or “confusion of the public”.

3. The user's agreement may be either absolute or not and a sub-licence may be granted.

4. The licensee may be authorised to initiate infringement actions in his own name.

5. The trade marks are transferred with or without the goodwill.

6. Perhaps the most practically important is that the powers of attorney for any acts before the Committee (normal procedure leading to registration) do not need any legalisation if issued as from the 01.11.1994 and onwards.

All the rest deeds and certificates need an apostille.

7. The mark needs to be used within five years from the date of registration. The mark is not “ipso jure” cancelled, but only after a petition of cancellation filed by person having a legal interest. The lack of genuine use is to be proved, but the Committee may reverse the burden of proof.