Ioannis Psarakis, Lecturer, LL.M (III), PhD Cand.
(Republished from Euro2day)
Summary: The purpose of the article (Part A and Part B) is to explain in simple terms and in the form of questions and answers the reasons why trademark registration is a highly advantageous option for the entrepreneur and, in the case of Greece, at a very low cost. We present interesting examples - always helpful for a better understanding - and draw the attention of the interested parties to possible areas of risk.
Is it in my best interest to register a trademark?
In recent years there has been a rapid increase in trademark applications. At the same time, even the largest companies are steadily spending millions on building and safeguarding their trademarks. All this is not happening by chance, of course.
Trademark registration provides the necessary space in which the business efforts and expenditures of any company can be preserved and brought to fruition. In Greek jurisprudence, the term 'registration of business performance' has been used.
It is intelligent to put trademark protection high on a company's list of priorities. A good product or service is powered and fueled by the strength of the trademark that accompanies them. It is a mutually beneficial and 'commercially ecological' process: the good product builds the brand, which then gives a 'from day one' boost to any new product; at the same time, if the new product also confirms the reputation of the brand and is good, it will add prestige to the brand which will then support the new products with even more vigour.
We can liken this whole mechanism to a closed circuit with zero 'friction', zero losses and maximised benefits. Think about what would happen if a third party registers a particular indication that attacks your products before you do. Any efforts and good impressions will have, in the end, favored someone else.
And in terms of litigation, however, if you identify a third party who is opposing your mark, the one who has a registered mark is favoured by the evidentiary facilities and further "weapons" in the litigation process, which the new law 4679/2020 provides.
In fact, as officially established by a survey of the legislative committee of the new law on trademarks (Law 4679/2020) in countries with population and economic sizes similar to those of Greece (e.g. Portugal, Hungary, Denmark, Czech Republic, Ireland, Norway), the fees for filing a trademark in Greece are the lowest: 100 euros for the registration of a trademark for a class of goods/services.
For a multitude of reasons, many of which can be found in our article, trademark registration ends up being a highly beneficial move for the business. Having said that, of course, incomplete registration, i.e. trademark registration without prior proper legal scrutiny, can cause a number of problems instead of, in fact, making it easier (see below).
What is a trademark and what can I register as such?
According to Art. 2 of Law no. 4679/2020, the national trade mark may consist of any signs, in particular words, including the name of persons, or of designs, letters, numbers, colours, the shape of the product or the packaging of the product, or sounds, provided that these signs:
(a) are capable of distinguishing the products or services of one undertaking from those of other undertakings; and
(b) may be represented in the Register in such a way that the competent authorities and the public can clearly and accurately identify the subject matter of the protection afforded to the right holder.
Thus, in addition to verbal or figurative marks with which the average businessman is perhaps more familiar, the following, for example, have been accepted as trade marks: the shape of a lipstick for Guerlain (see here), the colour magenta (Pantone Rhodamine Red U) for the telecommunications company T-Mobile (see here) and the distinctive shape of the front mask of Jeep-Chrysler jeeps.
Moreover, with trademark protection it is possible to shield both videos and sounds (the famous Tarzan's cry is protected as an EU trademark). The well-known chef Nusret Gökçe (Salt Bae) has registered a trademark for the way he applies cooking salt to meat. Twitter Inc. has registered a video as a trademark as have Cartier International AG, Dropbox Inc. and the owner of Galleries Lafayette.
However, there is also the possibility of registering a multimedia mark, that is, one that includes both the medium of image and the medium of sound. For example, Netflix (Netflix Inc.) has registered a multimedia mark since 2020, as has La Liga (Liga Nacional de Futbol Profesional).
Am I protected forever? In which areas?
Trademark protection lasts for 10 years from the date of filing the application. Thereafter, it can be renewed by paying a corresponding fee. In practice, protection can be granted in perpetuity. As regards the areas of protection, it depends. The options available for trademark registration are: national trademark (protection in Greece), European Union trademark (protection in all EU countries), international registration (protection in a specific or specific countries - a common option in the case of exports to the USA where contracts with importers require trademark registration with the UPSTO - United States Patent and Trademark Office).
Why do I need the help of a trademark expert before registration? Why not do it myself or with the help of a cheap provider?
Sometimes we read that trademark registration requires a lawyer, without whom it is not possible to proceed with it. But this is not true. Trademark registration can be wonderfully done by anyone (i.e. also by the entrepreneur himself) electronically (with taxis codes) or even on paper. The involvement of a lawyer is only required when filing applications (e.g. opposition, cancellation application, revocation application and so on) before the Trademark Administrative Board (TAB) and of course for actions before courts.
The absolutely appropriate option, however, is to obtain advice from a professional specialised in trade mark law with a solid knowledge of the case law and practice of Greek and EU institutions. The reason is that even if a trade mark is registered, the mark owner is not safe. He remains vulnerable to aggressive actions by third parties (e.g. request for cancellation, claim for damages and also lawsuit for violation of criminal provisions). Indeed, a trademark registration which ultimately infringes third party rights creates an illusion of security for the mark holder, which ultimately turns out to be dangerous (see below). That is to say, a registration without prior legal advice will very often, for a number of more specific reasons, amount to a 'non-registration'; or even worse (see the illusion of security, which ultimately turns out to be dangerous).
The reasons why you should have a legal adviser with expertise in trade mark law on your side become apparent in the next question.
I have a trademark. I registered it in the Trademark Registry. Am I safe?
No. Registering a trademark does not ensure that third parties will not take action against the trademark owner seeking cancellation of the trademark, compensation or even criminal penalties.
This is because under the new Law 4679/2020, the control that the Administration has to carry out in order to register is limited to a small part of the registration which could give rise to issues in the future. On the contrary, what creates the best possible conditions for the unproblematic activity of the registrant is the prior consultation of an expert. Thus, even assuming that a third party is directed against the signatory, the work done beforehand and the identification of "risk areas" will have the effect of substantially increasing the chances of rejecting third party requests in general.
For these reasons, it is often said that the registration of a trade mark for which no prior thorough legal examination and legal advice has been given is a first-class 'trap' for the proprietor: this is because he, having a right to the trade mark, is investing and expanding his business under a sign which is not excluded from being extremely vulnerable to aggressive moves by third parties. To give a simple example: if the trade mark is cancelled, all these investments will have been made in a vacuum. It is like doing an expensive renovation in a house that we rent for a certain period of time - the renovation is done, but in the end it ends up not with us, but with someone else. At the same time, this "other" will also be able to claim compensation (or even start criminal proceedings) because we did the renovation without being consulted first.