Greece Grèce Griechenland. Report Q181. in the name of the Greek Group by Evangelia CHRISTOPHORAKOU

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1 Greece Grèce Griechenland Report Q181 in the name of the Greek Group by Evangelia CHRISTOPHORAKOU Conditions for registration and scope of protection of non-conventional trademarks Questions 1. How is the scope of what constitutes a registrable trademark defined? Does that definition list specific examples of permissible types of trademark? The scope of what constitutes a registrable trademark is defined as any sign susceptible to be graphically represented capable of distinguishing the products of an undertaking from those of other undertakings. 2. What categories of signs are capable of registration as a trademark? Are any categories of signs excluded from registrability as a trademark? The categories of signs which are capable of registration as trademarks are the words, the names of persons or moral entities, the pseudonyms, the representations, the drawings, the letters, the numbers, the sounds, including musical phrases, the shape of the product or of its wrapper, as well as the title of a newspaper or a magazine. The categories of signs which are excluded from registrability as trademarks are those which, according to what has been stated hereinabove can not constitute a trademark, have no distinctive character, consist exclusively of signs or designations which may be used in the trade to denote the kind, the quality, the attributes, the quantity, the purpose, the value, the geographical origin or the time of production of the product or other characteristics of the product or the service or which have become usual in the current language or in the lawful and standard practice of the trade, consist exclusively of the shape imposed by the nature of the product or is indispensable to obtain a technical result or which lends a substantial value to the product, are contrary to public order and good morals, or might induce the public into error, particularly as to the nature, the quality or the geographical origin of the product, the flag, the emblems, the insignia, the coat of arms and the signs and seals of the Greek State and other States referred to in article 6 ter of the Paris Convention on the protection of industrial property and on the conditions of this article, as well as the signs of great symbolic significance and in particular the religious symbols, representations and words, and the signs whose filing is contrary to good faith or which have been filed in bad faith. 3. Where applications to register a colour per se or a combination of colours per se may be accepted for registration: Applications to register a colour or a combination of colours, may not be accepted for registration as a trademark unless this has been established as such in the trade. 3.1 In relation to goods, is such an application acceptable if it does not specify the outline, contours or proportions in which or the shape or object to which the colour is to be applied? 1

2 If the application does not specify the outline, contours or proportions in which or the shape or object to which the colour is to be applied, in principle, it is not acceptable for registration. A combination of colours such as three vertical or horizontal strips may be registrable, if it constitutes an original and characteristic combination and causes a distinctive overall impression to the consumer. 3.2 Is such an application registrable in relation to services and, if so, under what conditions? The matter has not been dealt with by the law and by the jurisdiction. 3.3 Is an applicant required to file a sample of the colour(s) applied for and/or a colorimetric reference or other colour code? The applicant is required to file a sample of the colour(s) applied for. 3.4 Can the mark be considered inherently distinctive in relation to certain goods or services? A mark can not be considered inherently distinctive in relation to certain goods or services. However, it may be considered as having a distinctive character if it causes an original overall impression to the consumer. 3.5 Will the mark only be accepted for registration after de facto distinctiveness acquired through use has been shown? A mark will be accepted for registration after de facto distinctiveness acquired through use has been shown. 3.6 Are certain colours denied registration on the basis that there is a need to keep them free for general use? The basic colours are denied registration on the basis that there is need to keep them free for general use. Otherwise the use of the basic colours would be monopolized by its owner, thus preventing others from using the same basic colour. 3.7 To what extent do other visual aspects of the way the mark is used affect the assessment of the distinctiveness of the mark? Other visual aspects of the way the mark is used affect the assessment of its distinctiveness if they create an original and distinctive overall impression to the consumer. 4. Where applications to register three-dimensional signs may be accepted for registration: Applications to register three-dimensional signs may be accepted for registration if the signs involved are distinctive. 4.1 What form of representation of the three-dimensional sign is accepted as part of the application for registration? As part of the application for registration are industrial designs and models, as well as the shape of the product or its packaging if they are distinctive. However, designs representing original products which may be protected as Patents are not registrable as trademarks. Signs which consist exclusively of the shape imposed by the nature of the product or which is indispensable to obtain a technical result or which lends a substantial value to the product can not be registered as trademarks. 4.2 What are the criteria for assessing whether the three-dimensional sign can be considered capable of distinguishing the goods or services of one undertaking from those of another? The criteria for assessing whether the three-dimensional sign can be considered capable of distinguishing the goods or services of one undertaking from those of another are whether 2

3 the sign involved has an original, distinctive shape with respect to the nature of the product covered thereby and whether it causes an original overall impression to the consumer. 4.3 What are the criteria for assessing whether the three-dimensional sign can be considered inherently distinctive in relation to certain goods or services? A three dimensional sign can be considered inherently distinctive in relation to certain goods or services if its shape is original. 4.4 Will the mark only be accepted for registration after de facto distinctiveness acquired through use has been shown? A three-dimensional sign may be accepted for registration after de facto distinctiveness acquired through use has been shown. 4.5 Are certain shapes denied registration on the basis that there is a need to keep them free for general use? Shapes which lack an original and distinctive character are denied registration as trademarks on the basis that there is a need to keep them free for general use. 4.6 To what extent do other visual aspects of the way the mark is used affect the assessment of the distinctiveness of the mark? Other visual aspects of the way the mark is used may affect the assessment of the distinctiveness of the mark, if they are particularly distinctive and cause a particular overall impression to the consumer. 4.7 To what extent do technical or functional considerations prevent registration? Technical or functional considerations may prevent registration to the extent that the sign is indispensable for obtaining a technical result and represents an original product that can be protected by a Patent of Invention. 5. Where applications to register smells may be accepted for registration: In principle smells can not be accepted for registration. 5.1 What form of representation or description of the smell is accepted as part of the application for registration? The form of representation or description of the smell which may be accepted as part of the application for registration is its representation by technical means or as a chemical composition of a certain type. 5.2 How is the capacity of the smell to function as a trademark and/or its distinctiveness assessed? The assessment of the capacity of the smell to function as a trademark and/or its distinctiveness depends on whether the smell does or not constitute an inherent characteristic or quality of the product. If it has a special characteristic added to the product by its creator which makes it distinctive it may be registrable as a trademark. 5.3 How is the mark made available to the public on publication of the trademark application and thereafter? This matter has not yet been dealt with. 6. Where applications to register a sound mark may be accepted for registration: Applications to register a sound mark may be accepted for registration. 3

4 6.1 What form of graphical representation of the mark applied for is required as part of the application for registration? The form of graphical representation of the mark applied for required as part of the application for registration are notes or palmic waves. 6.2 Can audio recordings of a sound mark be filed as part of the application for registration? This matter has not yet been dealt with. 6.3 If such audio recordings are filed as part of the application for registration, how are these recordings made available to the public on publication of the trademark application and thereafter? This matter too has not yet been dealt with. 7. Where applications to register moving images or holograms may be accepted for registration: 7.1 What form of representation of the moving image or hologram is accepted as part of the application for registration? This matter too has not yet been dealt with. 7.2 How is the moving image or hologram made available to the public on publication of the trademark application and thereafter? The matter has not yet been dealt with. 8. How is the scope of protection of non-conventional trademarks assessed? In particular, are registrations for non-conventional trademarks treated any differently than registrations for traditional forms of trademark either in substantive or procedural terms? In practice applications for non conventional trademarks are very rare. These applications are not treated any differently than registrations for traditional forms of trademark either in substantive or procedural terms. 9. To what extent is assessment of the registrability of non-conventional trademarks influenced by issues relating to enforcement and the scope of protection which should be afforded to those marks? These matters are dealt with by the Administrative Courts. 10. To what extent is the assessment of the registrability of non-conventional trademarks influenced by the fact that there may be a limited number of certain non-conventional marks (such as colours or shapes) available for general use? This matter too is dealt with by the Administrative Courts. 11. To what extent is the assessment of the registrability of non-conventional trademarks influenced by the fact that consumers may be less used to understanding non-conventional marks as an indicator of origin? If the consumers do not understand non-conventional marks as an indicator of origin, said marks can not be registered as trademarks. 4

5 Summary A registrable trademark is any sign capable of being represented graphically and of distinguishing the origin of the products and/or services covered thereby. Sounds and musical phrases are included in the list of permissible types of trademarks provided for by the law. Colours per se and combination of colours per se are registrable if they acquired distinctiveness through their use in trade. Three-dimensional signs, smell and sound trademarks may be registrable if they are distinctive and they can be presented in a form of a design, a chemical composition or a graphical representation. Although the letter of the law and its interpretation provides for registration of non-conventional trademarks, in practice only three-dimensional trademarks have been so far applied for registration. Résumé Une marque qui peut être enregistrée est tout signée capable à être representée graphiquement et à distinguer l'origine des produits et/ou des services couverts par lui. Les sons et les phrases musicales sont inclus dans la liste des types de marques permis par la loi. Les couleurs elles-mêmes et la combinaison de couleurs elle-même peuvent être enregistrées quand elles ont obtenus une distinction par leur usage dans le commerce. Les signes de trois dimensions et les marques d'odeur et de son peuvent être enregistrées si elles ont un caractère distinctive et si elles peuvent être representées dans une forme de dessin, par une composition chimique ou par une representation graphique. Quoique le lettre de la loi et son interpretation permettent l'enregistrement de marques non-conventionelles, en pratique jusqu à present il y a eu des demandes d enregistrement seulement pour des marques de trois dimensions. Zusammenfassung Eine registrierbare Marke ist jedes Zeichen, das graphisch dargestellt werden und die Herkunft der gekennzeichneten Produkte und/oder Dienstleistungen unterscheiden kann. Töne und Musikstücke sind in der vom Gesetz angegebenen Liste der erlaubten Typen von Marken enthalten. Farben als solche und Kombinationen von Farben als solche sind registrierbar, sofern diese Unterscheidungskraft durch ihren Gebrauch im Handel erlangt haben. Drei-dimensionale Zeichen, Geruchs-und Ton-Marken können registrierbar sein, sofern diese unterscheidungskraftig sind und in einer Form einer Zeichnung (Design), einer chemischen Komposition oder einer graphischen Darstellung prasentiert werden können. Obwohl das Wort des Gesetzes und dessen Interpretation die Registrierung von konventionellen Marken vorsieht, sind bis heute praktisch nur drei-dimensionale Marken zur Registrierung beantragt worden. 5