Greece Grèce Griechenland. Report Q 155. in the Name of the Hellenic Group by Nikolaos LYBERIS

Transcription

1 Greece Grèce Griechenland Report Q 155 in the Name of the Hellenic Group by Nikolaos LYBERIS Conflicts between trademarks and company and business names A. Legislation for the protection of company names and business names in Greece I. Law No. 146/1914 against Unfair Competition (articles 1, 13-15) Company names can be protected by virtue of the general provision of Article 1 of the above law according to which any act of unfair competition in commercial, industrial and agricultural transactions violating bonos mores is prohibited. Regardless of the said conditions (i.e. intention of unfair competition and opposition to bonos mores), company names are protected by the specific provision of article 13 of the same law. According to that whoever in commercial transactions uses a name, a trade name or a distinctive title or a distinctive sign of a shop or of an industrial business in a way that may create confusion with the name, the trade name or the distinctive sign lawfully used by another, may be compelled to refrain from such use. The infringer is also to indemnify the proprietor for the damage sustained by him, if he knew, or ought to have known that damage could be caused by such use. The same provision applies even in case of minor changes of another's company name provided that confusion might be caused due to such use. Criminal prosecution can be exercised whereas the court may order the removal and/or the destruction of the goods bearing the infringing company name. II. Law No. 1089/1980 about Chambers of Commerce (articles 4 and 8) The owner of a commercial undertaking (legal or natural person) is obliged to notify to the locally competent Chamber of Commerce, (i.e. the Chamber of Commerce of the legal seat of the involved company or residence of natural person) of the establishment of his business. One of the elements to be notified is the company name and business name, if available (Article 4 paragraph 1 of the above law). A new company name has to be adequately differentiated from previously registered company names (article 4 paragraph 4). If a later company name is confusingly similar to an earlier one, an addition to or amendment of the later company name is required to differentiate it from the previously registered company names. Under article 8 of the same law the lawful proprietor of a company name has the exclusive right to use it and to request the judicial protection thereof. 1

2 III. Civil Code (articles CC) Company names are also protected by the provision of article 57 CC referring to the right on personality and article 59 CC providing for the right to compensation for unlawful use of a company name. Article 60 CC protecting the exclusive right on the products of one's mind is also used, by the way of analogy in case of infringement of a company name. IV. Law No. 213/1975 ratifying Article 8 of Paris Convention According to the provisions of Article 8 company names must be protected in every Member State of the Union, even if they have not been submitted to registration requirements. The question is whether the foreign company name, which has lawfully been acquired in the country of origin, may be protected in Greece without any previous use in this state. According to one view, use of the foreign company name in Greece is required, e.g. it suffices that the company name is mentioned in the correspondence referring to the import of goods in Greece. According to another view, serious intention of use of the foreign company name in the state of protection suffices. This view is depicted in Decision No. 8458/1997 of the Civil Court of Athens ("Computerland" case): a serious intention of use of the respective foreign company name was established on the fact that the said name had been applied for as a trademark in Greece, as well as on the fact that negotiations took place for the construction of an agency agreement. In any case, even without this requirement, protection of the foreign company name would be provided for within the context of good faith (articles 281, 914 and 919 CC and article 1 of Law 146/14). V. Legislation concerning the protection of business names It is accepted in case law that the aforementioned legislation concerning the protection of company names applies also to business names. B. Acquisition of company names and business names 1. Acquisition of a company or business name by its use in the course of trade (substantial system / principle of publicity) The right on the company name and/or business name is acquired by its use in commercial transactions without any other formality requirements (Article 13 of Law No. 146/1914). The registration of a company and/or business name in the Register of a Chamber of Commerce (according to Article 4 paragraph 1 of Law No. 1089/1980) serves the purposes of a notification and does not lead to the acquisition of the respective right. It only creates the refutable presumption that the person (legal or natural) who notified and registered the said company or business name in the Register of a Chamber of Commerce 2

3 was the first to have used the specific company or business name in the course of trade, i.e. in commercial transactions; he is therefore the lawful proprietor thereof. 2. Principles of formation of a company name The following principles govern the formation of a company name: a. The indication constituting a company name must not be misleading (principle of truth). b. The indication chosen as a company name must not be confusingly similar to preexisting company names in the same or a similar business sector (principle of exclusivity or distinctiveness of company name). c. A company name must be distinctive and unique in relation to the owner of the commercial undertaking. Thus, one legal person is not allowed to have but one company name for all its activities (principle of uniformity of company names). d. A business name incorporates the goodwill of the underlying enterprise. Thus, the claim for its maintenance appears to be reasonable, according to the circumstances, even if it contravenes the principle of truth (principle of duration). 3. Refusal of the Chamber of Commerce to register a company name According to the provision of Article 4 paragraph 4 of Law No. 1089/1980 the locally competent Chamber of Commerce refuses the registration of a company or business name if it is confusingly similar to a pre-existing company or business name(s) in the same or similar business sector. Furthermore, it is accepted that the Chamber of Commerce is entitled to refuse the registration of an unlawful or misleading company name. In this context it should be noted that there is no central Company Names Register covering all registered companies nation-wide. Thus, a company name available and consequently registrable at the Company Names Register of Athens Chamber of Commerce may not be available in the Company Names Register of Piraeus or Thessaloniki Chamber of Commerce. Case law has acknowledged the protection of a company name not necessarily on a national level but on a regional or local level depending on the place of establishment and intended activity of the proprietor. C. Conflict of a trademark with a prior company name and/or business name 1. Legislation According to article 4 paragraph 3 (a), (b) of Greek Trademarks Law No. 2239/1994, a trademark application cannot be registered if: It conflicts with the right on a non-registered trademark or other distinctive sign being used in commerce; 3

4 It conflicts with the prior right on the personality of a third party or the prior industrial or intellectual property rights beyond those provided for by the present law. Furthermore, according to Article 17 paragraph 1e of the same law a trademark registration can be cancelled... (e) if it should not have been accepted for registration in accordance with the provisions of articles 3 and 4 of the same Law. 2. Actions to be taken against a trademark application or registration infringing an earlier company or business name On the basis of article 4 paragraph 3 (a) (b) of Law No. 2239/1994 about trademarks the lawful user/proprietor of an earlier company and/or business name may prevent the registration of a younger trademark application by means of an intervention or an opposition before the Administrative Trademarks Committee or the Administrative Courts. On the basis of article 17 in combination of Article 4 paragraph 3 (a) (b) of the same above Law no. 2239/1994 the lawful user/proprietor of an earlier company and/or business name may request the cancellation of a trademark registration before the Administrative Trademarks Committee (or the Administrative Courts) by means of a petition for cancellation due to the fact that the trademark registration should not be accepted since it conflicts with the earlier company or business name. Finally, on the basis of articles 1 and/or of Law 146/1914, articles 4 and 8 of Law 1089/1980, articles of Civil Code and article 8 of Paris Convention (see above) the lawful user/proprietor of an earlier company and/or business name may request before any Civil Court the cease of use of the younger trademark by means of an interlocutory injunction and/or ordinary civil action. The main conditions for all the above possibilities are: The right on the company or business name must have been acquired before the date of filing or priority of the later trademark application. To this end, the prior use of the company or business name in the course of trade must be substantiated. The younger trademark application/registration is confusingly similar to the earlier company or business name and the goods/services distinguished by the trademark application/registration are identical or similar to the activities carried out under the company or business name. D. Conflict of a company name and/or business name with a prior trademark When two distinctive signs are in conflict with each other, prevailing case - law is in favor of the sign, which was first used in the course of trade (principle of the priority in use). Accordingly, if the right on a trademark has been acquired (by irrevocable acceptance, publication and subsequent registration) before the use of a company or business in the commerce, the proprietor of the said earlier right may oppose to the use of the younger company or business name under which activities identical or similar to the products/services of the trademark are carried out. 4

5 In this case, the proprietor of the earlier trademark registration can request judicial protection of his right on the registered trademark before Civil Courts by means of an interlocutory injunction and/or an ordinary civil action based on the provisions of Greek Trademarks Law No. 2239/1994. The crucial criteria here would be: (i) priority in acquisition of the respective trademark right, (ii) threat of confusion of the consuming public. Finally, a trademark application can be protected: By virtue of article 1 of Law 146/1914. In this case, the intention of unfair competition of the infringer and the violation of bonos mores by the infringing act have to be substantiated. By virtue of articles of the same Law provided that the respective sign has prevailed in commercial transactions. E. Protection of a well known company/ business name or trademark If the prior company name or business name has become well-known, it confers its proprietor the right to prohibit the registration and/or use of an identical or confusingly similar younger trademark when the use of the latter would procure an unfair advantage from the distinctive character or reputation of the company name and/or business name or would harm the company's name or business name or its distinctive character or reputation. Similarly, if the trademark is a well-known mark, then the threat of confusion does not necessarily constitute a condition for its protection. The threat of decrease of the distinctive character of the well-known mark suffices. F. Protection of a company/business name or trademark corresponding to the family name of the owner According to article 5 of Greek Trademarks Law No. 2239/1994 if the trademark corresponds to the name of the applicant and the same name has previously been filed in favor of an other person to distinguish the same or similar goods/services, then a distinctive indication has to be added in order to differentiate the younger trademark from the earlier one. The above article refers only to cases of conflict between trademarks. However, it is accepted that the above provision is also applicable in case of conflict between a trademark and a posterior right on any distinctive sign and vice versa. Similarly, in accordance with the principle of exclusivity or of distinctiveness of the company name and article 4 paragraph 4 of Law No. 1089/1980 it is accepted that identical company names may coexist provided that the owner of the posterior one will add a certain indication to avoid the risk of confusion. 5

6 G. Link between the trademarks office and local Chambers of Commerce There is no link, relationship or collaboration between the Greek Trademarks Office and the local Chambers of Commerce where the company names and the business names are recorded. Hence there is unfortunately no chance of exchanging experience and expertise and no coordination of the registration policy whatsoever. H. Competent authorities Any interested party can request the correction of a registration of a company name/business name in the Register of a Chamber of Commerce before the Administrative Committee of the said Authority. In case of refusal, the One Member Civil Court is competent to examine the dispute (article 7 of Law No. 1089/1980). It falls into the jurisdiction of Civil Courts to prohibit the use of a trademark or a company name and/or business name if the aforementioned substantial presuppositions are fulfilled. Administrative Trademarks Committee, Main Administrative Courts and Council of State (petition for Cassation) are competent if the registration of a trademark is to be attacked on the basis of a company or business name previously used in the course of commerce. I. Regional protection of company and/or business names The protection granted to the company/business names under articles 4 and 8 of Law No. 1089/1980 is restricted to the area of competence of the Chamber of Commerce, usually within the borders of a municipality. On the contrary, the protection provided for by articles of Law No. 146/1914 against Unfair Competition and articles CC is principally nation-wide. However, a company and/or business name enjoys protection for that part of the Territory where its distinctive Power is active. Thus, protection of a company name is acknowledged by case - law on a regional or local level depending on the place of establishment(s) and potential activity of the proprietor. Hence, in case of collision between the name of a company acting all over Greece and a previously acquired name of a company which is active only in a certain region, priority has to be acknowledged to the company name which has first been used in the course of trade and the use of the younger company name has to be prohibited in that part of the Territory where the earlier company name acquired its distinctive power. On the other hand, the protection of a trademark is ex lege covering the whole Territory of Greece. J. Proposals for adoption of general rules a. It should be possible by law that an earlier trademark be used to prevent the adoption or use of an identical or confusingly similar company or business name. To this end criteria should be taken into account such as the identity or similarity of the goods/services distinguished by the trademark, on the one hand, and the activities to be potentially undertaken by an enterprise bearing an identical or similar company or business name according to its statutory provisions, on the other hand. Furthermore, the dilution or risk of association and the degree of reputation or notoriety of the trademark involved should not be neglected in the sense that 6

7 famous trademarks deserve increased protection and may function as a ground for refusal of an identical company or business name even in an irrelevant business sector. b. An earlier company or business name could prevent the adoption or use of an identical or confusingly similar trademark. Criteria to be applied in this context should be the identity or similarity of the goods/services distinguished by the trademark and the activities undertaken under the company or business name, the dilution or risk of association, as well as the reputation or notoriety of the company or business name. c. There should be a National Company Names Register with all company and business names recorded therein. In practice the State should solemnly consider linking and exchanging electronically the data available to the local Chambers of Commerce. Such a project should aim at enabling a complete availability search for a company or business name on a national level. d. It is imperative for reasons of safety in the course of trade that an authorization is granted to a national for the adoption of a new company or business name. This should be done preferably by the Register of Companies and/or Business names, which should be organized centrally covering the whole territory of Greece. No such authorization should be granted if the envisaged company or business name (i) is in a conflict with an identical or confusingly similar earlier company and/or business name, and if (ii) it is in a conflict with an identical or confusingly similar trademark application/registration. In the latter case the goods/services distinguished by the trademark application/registration and the activities of the company should be taken into account in order to evaluate the threat of confusion of the consuming public. The criteria provided for by the Greek Trademarks Law for the acceptance of a new trademark application should apply by the way of analogy in case of an authorization for a new company name, e.g. distinctiveness of the company/business name, identity/similarity of the most distinctive part of the company name to be registered with that of a previously registered company name and identity or similarity of the sector of business of the said companies, conflict with a posterior distinctive sign etc. The Nice Classification of goods and services distinguished by trademarks and the statutory aims of an enterprise should be examined thoroughly in order to determine any overlapping activities referring either to goods or services. The Register of Companies and/ or business names should consult thereto the Register of trademarks of the Trademarks Office. The foundation of an Administrative Authority comprising of reference judges, professionals coming from industry and commerce and other experts would be helpful in this context. e. In view of the similar nature of trademark rights and rights on company or business names, the applicable rules and proceedings in case of conflict between company 7

8 and business names should be at least comparable to those applying to trademarks. f. Protection granted to registered trademarks according to Greek Trademarks Law No. 2239/1994 does not necessarily mean that the name involved may be used as a domain name on the internet unless the required application and registration procedure before the competent administrator is attended to. Likewise the domain names administrator is not authorized by law to examine whether the applied domain name is duly registered at the Trademarks Office or is registrable according to the trademarks law and case law. The registration procedure for both trademarks and domain names is considered comparable and the Greek domain name supervisor is currently examining close collaboration possibilities between the responsible authorities. According to the prevailing opinion at this stage, it should be underlined that absolute correlation between the two different registration procedures may cause insurmountable difficulties in the use of the Internet domain names. Summary The Greek legal framework for the protection of a company or business name can be considered adequate; however, protection is granted in principal only within the territorial scope of activities of the company involved. Thus, small and medium sized enterprises enjoy protection only within the radius of a municipality. Company and business names are protected according to the principle of priority. In this sense, any posterior company or business name must be sufficiently differentiated from earlier one(s). Judicial conflicts between a trademark and a company or business name are resolved on the basis of prior use. The main criterion in this context constitute similarity of goods and/or services distinguished by a mark as opposed to the object of enterprise as provided for by the statutory rules. The imperative need should be underlined to establish a link between the Trademarks Office and the local Chambers of Commerce covering the whole territory of Greece. This should satisfy two major targets. Firstly, to enable the central and uniformed clearing of a new company and/or business name for the whole territory of Greece and not only for the restricted area of the local competence of one Chamber of Commerce. Secondly, to safeguard unique and distinctive entries both in the trademarks register and the company and business name register according to the principle of priority and the criterion of confusing similarity between the entrepreneurial activities on the one hand, and the goods and services distinguished by a mark, on the other hand. Zusammenfassung Der griechische rechtliche Rahmen für den Schutz von Firmenbezeichnungen bzw. Geschäftsnamen könnte als ausreichend eingestuft werden; nichtsdestotrotz wird dieser Schutz grundsätzlich nur innerhalb der territorialen Grenzen der Geschäftstätigkeit des betroffenen Unternehmens gewährt. Somit genießen kleine und mittlere Unternehmen diesen Schutz nur innerhalb des räumlichen Umfangs einer Stadt bzw. Gemeinde. Firmenbezeichnungen und Geschäftsnamen werden gemäß dem Grundsatz der zeitlichen 8

9 Priorität geschützt. In diesem Sinne muß eine spätere Firmenbezeichnung bzw. ein Geschäftsname von einem früheren hinreichend differenzierbar sein. Gerichtliche Auseindersetzungen zwischen einer Marke und einer Firmenbezeichnung bzw. einem Geschäftsnamen werden unter Einhaltung des Grundsatzes der früheren Benutzung entschieden. Das Hauptkriterium in diesem Zusammenhang bilden die Ähnlichkeit der Waren und/oder Dienstleistungen, welche durch eine Marke gekennzeichnet werden, in Gegenüberstellung zu dem satzungsmäßigen Geschäftsgegenstand eines Unternehmens. Der vorrangige gesetzgebungspolitische Bedarf sollte hervorgehoben werden, eine Verbindung zwischen dem Markenamt und den lokalen Handelskammern, bei welchen Firmenregister geführt werden, flächendeckend für das gesamte Griechenland herzustellen. Dadurch sind zwei Hauptziele zu verfolgen: Zum ersten ist eine zentrale Recherche betreffend eine neue Firmenbezeichung landesweit und nicht nur für den räumlich eingeschränkten Bereich der Zuständigkeit einer bestimmten Handelskammer zu ermöglichen. Zum zweiten sind einheitliche und unterscheidungskräftige Eintragungen sowohl im Markenregister als auch im Firmenregister unter Beachtung des Prioritätsgrundsatzes und in Anwendung des Kriteriums der Verwechselbarkeit zwischen den Geschäftstätigkeiten eines Unternehmens einerseits, und den Waren und Dienstleistungen einer Marke andererseits sicherzustellen. 9