The Trade Marks and Designs Registration Office of the European Union
This month James Nurton talks to Vali Sakellarides of Sakellarides Law Offices in Athens about trade mark reform, dealing with the counterfeiting threat and the impact of the economic crisis.
How long have you been working in trade marks?
I have been working with the law firm Sakellarides Law Offices since 1991. The firm was established in 1912 by my grandfather, Achilles Sakellarides, who practised in the areas of civil and commercial law for 57 years. My father, John Sakellarides, continued the tradition and focused on trade marks, patents and unfair competition.
What I find interesting about trade marks is that it is a dynamic field reflecting on the one hand the power and value of traditional brands that have proven long lasting due to the quality of the corresponding products or services and on the other hand the modern development of new brands and all kinds of products, from food to clothing and science all over the world. A powerful trade mark is a valuable asset and it is a challenge to protect and promote it.
How big is your trade mark team?
We are a boutique law firm, focusing on IP prosecution and litigation. We cover all aspects of trade mark services. We also handle corporate law matters for our clients.
Our team consists of three lawyers and four paralegals. We also cooperate with the most experienced investigator on counterfeit matters in Greece. For patent work we cooperate with engineers and specialists in the fields of IT, chemistry, biology and medicine.
How many trade marks do you file with OHIM on average?
We file approximately 10 CTMs per year and several international registrations. It is not a large number but Greek trade mark owners have been until recently hesitant about filing abroad and currently the financial crisis is a serious obstacle.
How many of your clients are domestic?
About 50% of our clients are Greek. Everybody here is afraid about what's going to happen and many companies have closed down. Greek companies want to file more cheaply and file fewer trade marks. It is a very bad situation but we have to be optimistic.
What was the first CTM you worked on? What was the most unusual?
The first CTM was Argo filed in 1996 in class 33. The most unusual one is We Get Your Blood Flowing for medical products in class 10.
Are you satisfied with the quality of examination and speed at OHIM?
I believe that the organisation is excellent and the staff do their best to respond timely to filings, requests and questions.
However, it is difficult to explain to Greek trade mark owners that the examination takes place only in relation to absolute grounds for refusal and that they have to keep opposing conflicting CTMs. Especially now with the current economic crisis CTM owners that do not have the means will not be able to afford to file oppositions.
How does OHIM compare with the Greek office?
The Greek Trade Mark Office is not fully computerised and still has a long way to go until it is modernised. It is not likely that such modernisation will happen any time soon due to the current serious political and financial situation in Greece.
The examination system at the Greek Office is very different as relative grounds for refusal are also examined, thus limiting the number of oppositions for conflicting trade marks.
How could OHIM improve its service?
By co-operating more closely with national offices, which of course is not only OHIM’s responsibility and by lowering the opposition fees as much as possible, so that trade mark owners with lower budgets can effectively protect their marks.
The Commission is reviewing the law on CTMs – what issues would you like to see addressed?
The issues of genuine use and co-existence of a later national trade mark far removed from the territory where the earlier CTM is in use are undoubtedly the most critical ones. These are clearly very difficult subjects to deal with. The assessment of genuine use on a case-by-case basis taking into account the extent of use, including the territorial extent, probably represents the only viable solution.
The issue about the distribution of CTM renewal fees and the proposal that 50% will be distributed to the national offices could lead to an improvement of online facilities at the national offices (including the Greek Trade Mark Office), provided that the distribution and effect of improvements are supervised by OHIM officials.
Furthermore, the online facilities may also permit at some point access via the OHIM to the databases of trade marks of the 27 nations of the European Union, so that CTMs could be filed following a careful search in all countries instead of performing individual searches in each country.
A further harmonisation of the procedures between the national offices and the OHIM derived from the improvement in online interconnection between the offices I believe would be welcomed.
Personally I am not in favour of shortening the different deadlines for oppositions etc. The system has proven that is works well under the current regime.
Have you filed Community designs?
Yes, we have filed Community designs and they have proved to be useful in cases of infringement of shoe and clothing designs. Judges in Greek courts take design registrations seriously into consideration, provided they are convinced about their originality. We have handled infringement of Camper shoes successfully based on Community designs.
What kinds of issues are you working on at the moment?
Apart from searches and filings we deal with litigation and settlement agreements in cases relating to counterfeiting and infringement of famous trade marks in the field of electronics, clothing and food. We also deal with litigation against former franchisees, who have not ceased using the trade marks although the franchise agreement has ended.
An interesting case involves the future of famous trade marks in Greece and how these are being perceived by the Greek courts and whether the traditional criteria for famous marks will still apply. We are expecting a court decision regarding a trade mark with a low degree of distinctive character due to descriptiveness.
What are the main issues for trade mark lawyers in Greece?
A new Greek trade mark law is imminent. The public consultation on the draft ended on 20th May 2011. The penalties for trade mark violators will be stricter and for the first time it will be possible to obtain a preliminary injunction without notifying the violator, in order to avoid the risk of destruction of possible evidence. These are positive aspects.
But there has been criticism of the draft regarding the abolition of article 5 of the current trade mark law which protects “name trade marks” with the following provision: “If a trade mark consists of the name of the applicant, and this same name has already been filed as a trade mark by another applicant to protect identical or similar goods, in such a case a distinctive sign must be added for the clear distinction from the prior mark.”
Traditionally, in Greece there exist numerous long-established and famous trade marks, especially in the field of food products (for example Papadopoulos for biscuits, Loumides for coffee) that consist of the name of the first producer. The current legislation allows a different producer with the same name to file it as a trade mark, provided it includes an additional distinctive element to differentiate it from the prior trade mark and avoid the risk of confusion.
Further, the draft does not provide for electronic filing. On the contrary, it requires six copies of the trade mark application and numerous copies of the mark. The Trade Mark Office's online facilities are very limited: you can search for trade marks but not see all of the details. But I think further investment in the Office is low down the list of priorities at the moment.
We would normally expect the bill to go to Parliament within 12 months of the consultation, which closed in May, but that may be delayed if there are elections.
What are the biggest challenges for trade mark lawyers today?
In my opinion one of the biggest challenges facing us today is the effective protection and prevention of infringement of clients’ trade marks in the internet environment. We must be well informed of technological developments as much as possible and adapt the provisions of the current law accordingly.
Globalisation also presents a series of competitive challenges to local law offices. Specialised training and qualifications are more important than ever before.
Have there been any significant changes at the IP office or in the courts in Greece?
A significant change was the establishment of specialised courts in 2006 dealing with cases of industrial and intellectual property only. That had a significant impact on trade mark case law. The judges are more informed in IP and familiar with the case-law of OHIM and the Court of Justice of the EU.
Is counterfeiting a challenge in Greece?
It is a major challenge. The customs officers together with the special division of the Tax Office have been trying to counter it. The customs intervention system is on the one hand effective but due to lack of computerisation we have to provide 17 paper copies of all the documents for the individual customs offices all over Greece.
In reality, though the number of containers entering the country is huge, available resources and manpower mean that only a small number of inspections are carried out.
As a principle, countries which exist on the periphery of the European Union or the border like ours require some kind of special consideration due to the magnitude of the counterfeiting problem resulting from this geographical position.
What’s the biggest change in trade mark practice you have seen in your career?
Certainly the biggest change happened in 1996 with the establishment of the Community trade mark. As a result we have had fewer filings but an increase in litigation work. The new imminent trade mark law will also result in several changes.
What changes do you expect in the future?
I believe that the biggest challenge is to come up with new original distinctive trade marks that can have a local as well as an international impact. Some clients with long established trade marks in Greece find that when they try to file a CTM, a similar trade mark has already been filed for similar goods and although it is not actually used for the goods the client deals in, it is still an obstacle for the further expansion of the business of the client.
In addition, owners of Greek trade marks that have a meaning in the English language realise that such a trade mark is not distinctive in other countries and not accepted by OHIM.