Relevant legislation assisting in protecting and enforcing IP rights in Greece are the laws on Trademarks (Law 4679/2020), Patents (Law 1733/1987), Designs (Law 2417/1996), Copyright and related rights (Law 2121/1993) as currently in force, which include provisions for the enforcement of the relative IP rights. Trademark law and Copyright law also include provisions for the criminal prosecution of trademark and copyright counterfeiting, whereas patent and design counterfeiting do not constitute criminal offences in Greece.
Relevant EU-wide provisions are also directly applicable, such as:
- The EU Enforcement Directive 98/71/EP of 13 October 1998, which is transposed in the Greek IP laws; but for any issues not transposed, the Enforcement Directive is directly applicable.
- The EU Customs Regulation 608/2013 regulating the grant and enforcement of Applications for Action (AFA) by Greek customs; the Regulation applies for both EU-wide grants of AFAs issued by any EU Customs based on EU IP rights as well as for national grants for AFAs, also based on Greek IP rights.
Additionally, a unique and very important tool is the existing specific legislation (comprising laws 4177/2013 and 4712/2020, as currently in force). This legislation enables market controls as well as the seizure and destruction of counterfeit products by a simplified procedure using administrative decisions made by a number of competent enforcement authorities.
The last important legislative changes took place in 2020 with the new Trademarks Law (Law 4679/2020) and the law governing market controls and administrative seizures of counterfeits (Law 4712/2020). These provisions have undergone some changes since their introduction, mostly regarding the procedure of enforcement and seizure of IP rights based on administrative decisions by the competent authorities.
1 . Criminal prosecution & civil enforcement
1.1. Criminal prosecution
Counterfeiting of Trademarks and Copyright leads to criminal prosecution in Greece, whereas Design and Patent infringement are not criminal offences.
The Trademark Law sets out criminal provisions against counterfeiters. The infringement of a well-known trademark is explicitly considered to be a criminal offence.
According to Supreme Court jurisprudence, additional criminal offences included in the Penal Code may apply to trademark infringement – for example, forgery (Article 216 of the Penal Code), fraud (Article 386) and Acceptance and Dissemination of objects of crime.
Trademark counterfeiting is considered a private offence in legislation, therefore the Trademark rights holder must file a criminal complaint and show the existence of wilful infringement by the counterfeiter in order for the authorities to commence a criminal case for trademark counterfeiting. Such criminal complaint must be filed within the non-extendable deadline of three months from the criminal act or from the rights holder learning about the act and learning of the identity of the counterfeiter (whichever is later); in cases of recurring infringement, each new infringing act resets the three-month deadline. The rights holder may withdraw the criminal complaint for trademark counterfeiting if it so chooses, as this is considered a private offence. This presents an advantage in the case of settlement during the criminal proceedings. On the other hand, other crimes that may be included in the prosecution such as forgery, are considered public offences and the prosecution of such will not cease, even when the trademark owner withdraws the criminal complaint.
In contrast, copyright infringement constitutes a criminal offence that the authorities will pursue ex officio (i.e., without a complaint by the rights holder) if the prerequisite of wilful infringement is established.
The criminal prosecution is brought before the competent court at the location where the infringement took place.
An advantage of criminal proceedings is that counterfeit goods may be seized by the authorities right away. A criminal court may order destruction of the seized counterfeit goods and also of the means of committing the crime of trademark counterfeiting, such as, machinery, vehicles, blank t-shirts in the presence of heat transfers and so on.
The minimum imprisonment term for trademark counterfeiting is six months and the minimum monetary fine is EUR 6,000. Counterfeiting – that is, the unauthorised use of identical marks for the same or similar products leading to profit for the counterfeiter or damages to the rights holder on a commercial or professional scale – is regarded as an aggravated crime and incurs much stricter penalties (a minimum of two years’ imprisonment and a monetary fine of EUR 6,000 to 30,000). A third party which knowingly infringes a trademark, even if it acted as an intermediary (e.g., a distributor, importer, holder or exporter of infringing goods) also faces criminal penalties.
In cases of copyright infringement, criminal proceedings may lead to imprisonment of up to one year and a monetary fine of between EUR 2,900 and 15,000. These may be increased to 10 years and EUR 34,075, respectively, in cases of severe infringements. In such cases the infringer’s trading licence may also be revoked.
Criminal cases for counterfeiting are heard in general criminal courts in Greece, there are no IP sections for such, unlike civil matters, for which specialised courts are available.
1.2. Civil enforcement
The civil courts that hear IP rights disputes are specialist IP courts with specialist judges. Greece has two EU Trademark Courts – special sections of the Athens District Court (responsible for the southern and western part of Greece as well as the islands) and the Thessaloniki District Court (responsible for the central, northern and eastern part of the mainland).
It is important to note that the EU Trademark Courts also have exclusive jurisdiction over patent and design infringement disputes. Copyright disputes for which the Athens and Thessaloniki courts are competent are also heard by the specialist IP sections; in Piraeus, copyright disputes are heard by a specialist section with specialist judges.
Injunction applications are heard by general judges, as are criminal disputes.
The civil enforcement regime in Greece is as follows. There are two forms of civil protection: provisional injunctive measures and normal proceedings.
In a civil claim the rights holder seeks to reverse the effects of the infringement, namely to obtain a cease and desist order and claim damages. The court may order the recall of infringing products and other materials and their removal from the market or destruction. At the plaintiff’s request, the court may order publication of the decision in the paper or online media at the infringer’s expense. The new IP laws have fully incorporated the IP Rights Enforcement Directive with regard to civil actions and provisional measures against trademark infringers.
The rights holder or beneficiary may obtain a provisional court order against an infringer, ordering the provisional seizure and withdrawal of the infringing merchandise before it enters into circulation through trade networks.
In the case of commercial-scale infringement or imminent infringement, the court can issue an ex parte order for the provisional seizure of the alleged infringer’s assets and the freezing of its bank accounts, provided that the trademark beneficiary provides evidence that the payment of compensation following a civil action would be endangered. In addition, the court may order the alleged infringer to provide all banking, financial and commercial documents and
any other information regarding the infringing activities.
Provisional measures may also be sought and ordered by the courts against intermediaries whose services the infringer has used for infringement.
The civil courts enforce IP rights in cases of actual or threatened infringement.
Discovery, as known in the common law system, is not recognised.
In injunctive measures, a single judge decides whether to grant the preliminary ruling (in urgent cases) or the provisional order.
A provisional order may be granted immediately or within a few days of filing a petition for a preliminary injunction, following a hearing by a single judge. In practice, a preliminary order is an important means of protection for a rights holder. In order to obtain such an order, the rights holder must prove that there is great urgency or imminent risk which must be avoided. This offers immediate remedies to the rights holder.
The oral testimony of one witness for each side is allowed only in injunctive measures.
In normal proceedings no oral examination of witnesses takes place, instead each side may submit a maximum of 5 written sworn affidavits of witnesses, held in front of a magistrate or a notary public.
Experts may be heard as witnesses.
In IP enforcement cases that are heard in front of the three-member District Courts, there is a compulsory mediation step, before the court hearing may take place. This first step has as its objective to ensure that the parties are informed of the possibility of solving the dispute through mediation. If the parties decide to enter mediation, all further procedural deadlines are halted. An agreement through mediation is recorded in Court and is automatically vested of enforcement power. In such an agreement it is possible to include issues that were not included in the lawsuit and also to include penalty payments in the case of future infringement of IP rights.
The judgment of a normal procedure lawsuit may be provisionally enforceable, upon request, even before an appeal has been heard.
On appeal, the hearing will generally take place between seven and 10 months after filing and the judgment will be issued approximately five to 10 months later. A final appeal to the Supreme Court is available based only on issues of law and follows the same timeframe as for the first appeal.
The burden of proof always rests with the plaintiff. To ease this burden, the Trademark Law provides that where the infringing mark is identical to the plaintiff’s mark, infringement may be
proven simply by presenting to the court the trademark registration certificate from the Trademarks Registry.
Under the law, a licensee can file a civil suit together with the rights holder. If the licensee has the rights holder’s permission, it may seek to protect the right through infringement proceedings and compensation in its own name only. For a licensee to act alone, it must be the exclusive licensee; or
the rights holder must have been informed of the infringement but not have acted to protect it. A licensee can always participate in infringement proceedings started by the rights holder to support the rights holder’s request.
Patent licensees may file a civil suit for patent infringement as long as the patent licence is recorded at the Patent Office.
In trademark infringement cases, damages in favour of the rights holder or beneficiary are calculated based on lost royalties, if the infringer would have been granted a licence, or lost profits. Further, in the absence of intent to infringe or gross negligence, the profits derived from the infringement by the infringer or lost by the rights holder may be awarded to the rights holder (unjust enrichment). In case of wilful infringement, the rights owner can also ask for moral damages.
In case of copyright infringement, the courts may grant the rights holder lost profits, account of profits or moral damages. In order to facilitate proof of damages, the law provides that pecuniary compensation may not be less than twice the fee that would be due for the form of exploitation carried out by the infringing party without authorisation. Instead of seeking damages, and regardless of whether the infringement was committed with intent or negligence, rights holders may demand recovery of the profits made by the infringing party from such exploitation.
In cases of patent and design infringement, if the infringement was intentional the plaintiff may choose from the following monetary remedies provided by law:
- compensation for damages (including actual loss, lost profits and moral damages, if these can be substantiated);
- account of profits; or
- payment of an amount equal to lost royalties – this amount must be substantiated and proven by the plaintiff.
The amount of damages claimed must be fully substantiated by the plaintiff and shall be the damages actually suffered by the plaintiff or the profits actually made by the defendant.
Punitive damages are not granted by law unless they are contractually agreed between the plaintiff and the defendant in the form of a penal clause in a prior contract and this contract is breached by the defendant.
Interest accrues from the date on which the lawsuit including the compensation claim is served to the defendant. The court assesses liability and quantum of monetary remedies within the same trial.
1.3. Grey market and counterfeit goods
Illegal parallel imports that were not destined to be used within the EU by the IP owner, can be stopped through civil court decisions, because such use is considered an infringement of IP rights and not counterfeiting.
Dealing in grey goods is not per se a criminal offence, but may become one when the labels are falsified, so as to change the name of the distributor into Greece or when the lot numbers are erased from products bearing such, like spirits, perfumes or edibles. Such a case would amount to forgery and falsification of documents.
Due to the fact that the sale of alcoholic spirits, tobacco products, beer and coffee are subject to excise tax in Greece, the import and sale of such products without payment of the excise tax in Greece amounts to smuggling. In order to avoid paying the excise tax and evade smuggling offences, illegal parallel importers have a practice to remove the original labels placed on the products by the brand owners and which labels include the details of the distributor in the country in which the brand owner destined and sold the product. There is a history of Criminal court decisions in the last few years deciding that replacing a label bearing the brand owner’s details and trademarks by the illegal parallel importer in the form of affixing a counterfeit label including the Greek official distributor’s name together with brand owner’s trademarks, amounts to trademark counterfeiting and forgery, irrespective of whether the contents of the bottles are authentic. Because the aim of affixing such counterfeit labels is to mislead public authorities and the consumer that the product is legitimately sold in the Greek market and that excise tax has been paid.
In addition to legislation on IP rights, Greek IP enforcement and market controlling authorities also use consumer protection legislation, electrical safety legislation, hazardous/dangerous products liability as means for the seizure and destruction of products that do not meet safety guidelines, such as toys, cosmetics, electrical appliances, and so on.
1.4. Criminal v. civil enforcement
Criminal measures present a particular advantage over civil enforcement in that the counterfeit products may immediately be seized and stored until the case is decided in the merits. Additionally, in most cases it is possible that the seized products be destroyed by issuance of an administrative decision (simplified procedure) without having to wait for the Court’s decision on the merits; this is possible by use of the unique possibility offered by Greek law 4712/2020.
Damages may be reached in Greece only following a civil Court decision, or following private settlement reached during criminal proceedings; in the latter case the plaintiff may withdraw its criminal complaint.
2 . Border enforcement
The EU Customs Regulation and the Greek Customs Code govern border seizures in Greece.
In practice, customs actions are initiated by the rights holder filing an application to request that Customs inspect suspect goods to determine whether they are counterfeit and seize them if necessary. Such applications (Application of Action – AFA) are valid for one year and can be filed again thereafter.
However, customs are free to act based on a suspicion of infringement, given a number of indications. In such cases, even in the absence of an Application of Action, Customs will identify the rights holder’s registered representative in Greece by contacting the Trademarks Office. The rights holder then has three working days in which to file an application for customs intervention.
Seized goods will be destroyed on confirmation from the rights holder that they are counterfeit and with the agreement of the importer. Seized goods will also be destroyed if the importer is notified in writing and does not object by the deadline, or if the address declared in the importing documents is incorrect.
The costs of destroying counterfeit goods are borne by the rights holder. However, by commencing a court action the rights holder may seek compensation from the importer for such costs, as well as for storage costs that may be incurred if destruction is delayed.
The importer or its representative is notified of both the seizure decision and the destruction decision. Under the Customs Code, the importer has 10 working days within which to lodge a written objection to either decision. In case of objection by the importer to simplified destruction, the goods will continue to be detained upon the filing of a court case for the establishing of the infringement of the IP rights, in question.
Customs also impose fines on importers of counterfeit goods for infringement of the Customs Code. This is the case, for example, when goods are declared to be destined for personal use or as samples, and it is revealed that they were destined for sale in trade.
If the rights holder does not respond within the prescribed timeframe, the goods are released.
According to the Trademark Law, counterfeit goods that are in transit in Greece are considered to be infringing goods that may be seized and destroyed. Therefore, Customs can also seize goods in transit.
Customs has the power to act anywhere within the Greek territory – it is not restricted to the border imports. Customs officials may also seize counterfeit items transported on the highways within Greece, regardless of whether the goods are destined for export.
Customs have parallel competence in Greece for the enforcement of IP rights, together of a number of other authorities, such as the Police, Economic Police, Economic Crime fighting units, Coast guard and market controllers.
The IP rights holder has the right to request, and will always obtain, information from Customs regarding the identity of the dispatcher and of the importer of counterfeit goods into Greece. Any information thus obtained can be further used by the IP owner.
The IP owner can turn against the importers of counterfeit goods for IP counterfeiting, both with civil and criminal measures.
Rights holders operating in Greece should record their rights through customs intervention requests. Ideally, the rights holder should include detailed information about the distinctiveness of the original products and counterfeit goods, as well as common import and transit routes. It is advisable to also record shape marks and designs, so as to address the separate importation of non-banded products and the brands that are destined to be affixed thereon.
It is also advisable to appoint a local contact in Greece, as this can considerably speed up communication, and destruction process as well as training local enforcement authorities on technical matters such as trends, shape marks, lookalikes etc.
2.2. Recent trends and COVID-19
The COVID-19 pandemic has brought a disruption of the commercial routes used by counterfeiters to bring goods mainly from China into the EU. With the cost of transportation from China rising, we note increasing volumes of imports into Greece by land from Turkey. A significant volume of these counterfeits are destined to be sold in the Greek touristic areas and via online sales. At the same time, there is a constant trend of Greek customs seizing counterfeits entering Greece from Turkey and transported with final destination in eastern and northern Europe.
3 . Online anti-counterfeiting enforcement strategies
Third parties that are facilitating the sale of counterfeit goods are also considered to be responsible for IP counterfeiting.
There is specific legislation against e-shops and social media accounts selling counterfeits. However, compiling evidence of such acts remains an issue. More specifically, the trend that we observe in the market is that the extent of sales of counterfeits through such accounts are difficult to monitor and prove. Moreover, despite take-down notices such accounts are revived under different names and continue the sales of counterfeits. Some enforcement authorities have become particularly experienced in carrying out successful online-offline actions, leading to the seizure of counterfeits stocked and sold online outside visible commercial channels.
3.1. Domain names
The national body governing the issuance of domain names (EETT) holds an administrative procedure for the cancellation of domain names that infringe prior TM rights. The procedure is held in writing and evidence of holding a prior registered TM is sufficient for the cancellation of .gr domain names.
3.2. Social media
It is noteworthy that there is a great increase in the sale of counterfeit products through social media accounts such as Facebook, Instagram and increasingly TIK TOK. Counterfeiters become more and more sophisticated and tend to dissimulate and blur the text within the trademarks as displayed, so as to evade controls via online anti-counterfeiting tools. To this same purpose, counterfeiters increasingly use videos (Instagram stories & Tik Tok) where counterfeits are presented and boxes with branded products are opened and then presented and offered for sale.
4 . Additional information
There are IP enforcement coordination bodies, separate for products with excise tax (spirits, fuel, tobacco, coffee, beer), named SEK and for the rest of the counterfeit products, named DIMEA. Of those, DIMEA also performs seizing actions and raids in the market, but it is difficult for brand owners to obtain photos and details of the circumstances of such seizures, so such process has margins for amelioration.
5 . Frequently asked questions