Lawpractice

Trademark

A trademark refers to the distinctive symbol of a business, which is linked to its reputation and can be registered by both natural and legal persons. The trademark is distinguished from the certification mark, which is used to indicate the certification of a product or service under specific quality and/or safety standards.

It is hard to imagine many well-known companies without their characteristic trademarks, which often determine theirs success in the market.

Therefore, registering a trademark in the trademark registry is essential to ensure its uniqueness and to prevent third parties from using it. If a business is recognized based on a distinctive trademark, it can even seek the registration of domain names even if they are owned by third parties.

It is evident that a business that does not protect its trademark risks facing fraudulent imitations or thefts of its trademark, which can have serious consequences as the trademark may be the most valuable intangible asset of a business. The power of the trademark is of great significance, and the risk of failing to secure trademark protection can have severe consequences.

Trademarks can be words (if they have distinctiveness), names of persons, business names, pseudonyms, images, designs, letters, numbers, colors, sounds, etc. To be registered, it must be able to be represented graphically and be perceived with the eye, but it is also possible to register three-dimensional trademarks, as well as sound or olfactory trademarks. However, it should not only use common words such as bar, club, etc. but should be accompanied by other distinctive features characterized by originality.

Today, trademarks can also be registered as positional trademarks, as pattern trademarks, as trademarks of one or more colors, as motion trademarks, as sound trademarks, as holographic trademarks, and as audiovisual trademarks. However, in the case of positional, pattern, or color trademarks, when their description differs from their representation, the description is considered stronger.

The registration of a trademark allows the registrant to have the exclusive right to use it and the right to use it in their products to distinguish them from other competing products, but also in their services provided; moreover, the use of the trademark can be in both physical and digital media.

Before registering a trademark, a search should be conducted to ensure that the trademark to be registered does not resemble any already registered trademarks, to avoid any objections or legal disputes with third parties that hold similar or identical marks. This is particularly important as if the trademark is rejected for the reason that it resembles another existing trademark, the fees paid are lost and a redesign of the trademark may be required.

Trademark protection can be obtained at three levels, depending on the scope of protection:

national (or domestic) protection, which covers only Greece (registered at the General Secretariat of Trade of the Ministry of Development and Competitiveness);
community protection, which covers all European Union (EU) countries; in the event of the accession of new member states, protection is automatically extended to them, and it is registered by the European Union Intellectual Property Office;
international protection, which covers both EU and non-EU countries where a business may operate; however, each country requires a process in its relevant office, and not all countries are automatically covered as with the Community trademark (the maximum number of countries that can be covered is 131), therefore, a business must select which countries will be covered (this trademark is registered by WIPO).

Depending on the countries in which the business operates and the business activity, one of the above categories or multiple categories may be sufficient.

In Greece, the Community trademark is often considered the best option for businesses that do not engage with countries outside the EU and do not want their trademark to be registered only in Greece, as the Community trademark also applies in Greece.

However, if a business deals with countries both inside and outside the EU, it should proceed with international registration (in target countries), and community-wide to ensure its trademark is registered in all EU countries without needing to register it individually in each one.

For example, if a company operates in Greece and Italy, it might choose to register a Community trademark, but if it later expands outside the EU, it will need to adjust its strategy.

The classes of the trademark are also significant, as registration in all classes entails considerable cost. Each business should consider its potential expansion into other sectors, to ensure its trademark is protected in those sectors, but not to register it in classes that will never be of interest.

Our office handles trademark registration at the national, community, and international levels.