What is the legal framework against piracy and counterfeiting?
Anti-piracy and anti-counterfeiting provisions are to be found dispersed in various bodies of law, the most important of which are the following:
- Trademark Law 4072/2012, articles 121-183 of which regulate the use of registered trademarks and sets out the conditions on which a rightful owner may act against counterfeiters. The Law also contains special criminal provisions.
- Copyright Law 2121/1993 which protects works such as music, audiovisual works, computer programs, publications and radio/television broadcasts, literary works. The law contains special criminal provisions as well.
- Presidential Decree 259/1997 on Industrial Designs along with Law 2417/1996 on the implementation of the Hague Convention regarding the international registration of industrial designs
- The Unfair Competition Law 146/1914 which prohibits any use by an undertaking of a competitor’s trade names, company names, distinctive titles, unregistered trademarks, in the course of trade.
- Regulation 608/2013 concerning customs enforcement of intellectual property rights.
- Law 3377/2005 on the Sanitation of Trade which regulates the seizure and destruction of pirated or counterfeit goods.
How are piracy and counterfeiting treated?
Both piracy and counterfeiting are prohibited and punishable by both civil and criminal law. Generally, copyright holders and trademark owners can sue pirates and counterfeiters in civil courts and seek provisional injunctions, whereas the authorities can use the respective criminal provisions in order to sue counterfeiters in criminal courts. More specifically according to article 3 of the Copyright Law the creator/author of a copyright protected work has the absolute discretion, power and control to decide how to commercially exploit his works but also to prohibit any such act.
Respectively Article 125 of the Greek Trademark Law confers to its proprietor the exclusive right to affix the sign to his goods and/or their packaging, to place the goods on the market,to import or export the goods etc. At the same time the trademark proprietor is entitled to prevent all third parties not having his consent from using in the course of trade, any sign which is identical to his registered trademark and also to prohibit the mere transit through Greek territory of counterfeit products that have another country as their final destination or the mere import for the purpose of re-export of such products.
In turn, according to article 26 of the Design Law, the owner of a registered design has the exclusive right to use it and to prevent all third parties not having his consent from using it. The construction, manufacturing, placing on the market, import, export or use of the product on which the design has been placed or applied, as well as the storing of products, are all acts that fall under the prohibition. As per Regulation 6/2002 unregistered designs may also be protected, but solely against the act of copying the design (article 19).
What measures are available prior to the counterfeit/pirated goods entering the country?
Counterfeit/pirated goods’ seizures by the customs authorities are the result of either random, routine, sampling inspections or of targeted actions initiated by the customs authorities where valid suspicions regarding the infringement of IP rights exist. If an application for intervention has been filed prior to the identification of infringing goods, the appointed representative of the rights holder will be contacted (in the context of the Customs monitoring process laid out by the Regulation). If no application has beenfiled, then the authorities will contact any person or entity entitled to submit such an application and inform them of the alleged infringement. In the latter case the application will have to be filed by the rights holder within four working days of the receipt of the notification sent by the customs authorities.
How does the process work?
Once the customs authorities have identified goods suspected of infringing an IPR covered by a decision granting an application for action (AFA), they will suspend the release of the goods or detain them and inform the declarant or the holder of the goods, about the sus382 pension within one working day. At the same time, they will notify the rights holder. If no application has yet been filed then the customs authorities will notify persons or entities entitled to apply, about the alleged infringement of the IPRs.
Can customs authorities proceed to the destruction of the counterfeit goods?
Customs authorities may proceed to the destruction of the goods, without the need to determine whether they infringe an IPR if the rights holder confirms within 10 days (3 days for perishable goods), in writing, that he believes that an IPR is being infringed and that he agrees to the destruction of the goods. If such confirmations are not submitted, then the goods will be released, unless a procedure for the determination if an IPR has been infringed has been initiated.
Moreover, the declarant or the holder of the goods has to confirm within 10 days, his agreement to the destruction of the goods. For the destruction of the goods to proceed, both parties (rights holder and the declarant or the holder of the goods), have to grant their consents. In case the declarant or holder of the goods fails to give his consent within the above-mentioned term, then the right-holder has to initiate proceedings in order to ascertain whether an IPR has been infringed.
What remedies are available once the counterfeit/pirated goods have been put on the market?
Counterfeit/pirated goods that have already been put on the market may be seized and destroyed by the Customs authorities, the Police, the Municipal Police, the Financial and Economic Crime Unit (SDOE) of the Ministry of Finance, or the Coastguard. In practice this occurs either following the respective request by a rights holder or as a result of random inspections carried out in markets. The authorities have extensive powers and may carry out random on-site inspections in open-air markets, warehouses, stores and storage facilities. For example, they may seize and destroy on the spot, goods that are suspected of being counterfeits/pirated by any means available (e.g. by disposing them in a garbage truck or tainting them with spray paint) provided that the holder of the goods does not object.
How does the process work if the holder of the goods objects?
In case the holder of the goods objects to their destruction, he may file a written objection and he will be granted a deadline in order to produce the necessary poof in order to establish that the goods are genuine/non-infringing. In the meantime, the authorities will inform the right holder who will have 10 days in order to confirm that the products are indeed counterfeit/pirated. If such a positive statement is given then the alleged infringer will be given an additional 3 days in order to oppose such statement, following which the rights holder has an additional 10 days to file a claim with the competent courts whereas if he fails to do so, the seizure will be lifted and the goods will be released (article 11 of Law on Sanitation of Trade).
Are copyright-protected works treated differently?
In connection to copyright, any person who illegally reproduces, sells or otherwise distributes to the public or possesses with the purpose of distributing a computer programme, as well as any street vendor, standing person (outside a shop), or vendor inside a shop, caught distributing to the public by sale or by other means, or possessing with the intention of distributing copyright protected sound recordings may be fined by the SDOE, the Police, the Port and the Customs authorities (article 65a of the Copyright Law).
What legal actions can the right holder take against the infringer?
Rights holders have civil remedies against the infringers and they can claim damages, the cessation of the infringement or obtain judgments in order to prevent future infringements by the same defendants. The trademark law has a special provision by virtue of which, in infringements where identical marks are being used for identical products, it is sufficient for the plaintiff to provide the Court with the certificate of registration of the trademark in order to prove in full the infringement.
Plaintiff may also seek the seizure of the goods and their removal from the market (at the expense of the infringer), the removal of materials and equipment used in the creation or for the manufacturing of said goods, as well as their destruction. The above measures may also be ordered against intermediaries whose services are used by a third party to infringe the plaintiff’s rights. It is also possible, following a respective request, for the Court’s decision to be published in the media.
Are preliminary injunctions available?
Preliminary injunctions which are helpful in urgent cases where expedited action is called for, are also available. A provisional court order may be obtained as well, in order to proceed with the provisional seizure of the infringing goods prior to them being distributed. In cases where any delay could cause irreparable damage to the interests of the rights holder (trademarks as well as copyright) then the interim injunction may be obtained ex parte.
Can damages be claimed and how are they calculated?
The Trademark Law provides that rights holders may indeed seek damages and may claim the amount that the infringer would have paid for royalties, if he had obtained a license. If damages are not calculated on that basis then, the factors that are considered by the Court, include among other things, the negative economic effects the infringement has had for the rights holder, the loss of profits and any benefits the infringer has enjoyed. If it is established that the infringer had no liability (i.e., that he could not have known that he was committing an infringement) the profits or benefits gained by the infringer, are payable to the rights holder.
For copyright infringement, damages cannot be less than twice of the legally required or normally payable remuneration the rights holder would have received if a license had been granted. Damages can be claimed irrespective of whether the infringement has been made intentionally or by negligence.
Is it possible to ask the Court to order the infringers to provide more information on the network used?
Indeed, article 151 of the Trademark Law provides that the Court may, either in the process of an ongoing trial or following a petition for a preliminary injunction, order the infringer to provide information regarding the origin of the products and the distribution networks used. The same may be ordered against anyone found:
- illegally possessing the infringing goods,
- possessing such goods on a commercial scale,
- providing services that facilitate the infringement of a trademark or was indicated by one of the aforementioned persons as being actively involved in the production, manufacturing or distribution of counterfeit goods.
The information to be disclosed include, the full names and the addresses of the producers, manufacturers, distributors, suppliers and other previous possessors of the goods, as well as recipients, wholesale traders etc, information on the quantities of the counterfeit goods and their price. A similar provision is in place also for copyright protected works, (Article 63a of the Copyright Law).
Is criminal prosecution of the infringers possible?
Both piracy and counterfeiting (designs excluded) are criminal offenses and the respective laws contain provisions that make their criminal prosecution possible. Other, general criminal law provisions, such as those for forgery or fraud (articles 216 and 386 of the Greek Penal Code) may be also applicable depending on the facts of each case. However, in order for the authorities to initiate an investigation regarding counterfeiting (trademark infringement), a criminal complaint has to be filed by the rights holder, within three (3) months from the day on which he became aware of the infringement. In contrast, in cases of piracy (copyright infringement) the authority can launch the investigation without a need for the rights holder to file a criminal complaint. In both cases however, in order for the infringer to be prosecuted the investigation will have to establish that the infringement was indeed intentional.
In cases where such intention is lacking, as is the case with vendors trading in counterfeit/ pirated goods, without knowing the true nature of the goods, the suspects will be not prosecuted.
What sentences do the infringers face?
Counterfeiters face strict criminal penalties for trademark infringement, which includes a minimum imprisonment term of six months and a minimum fine of € 6,000. In instances where profits arise or damages occur, on a commercial or professional scale, stricter penalties, which include a minimum of two years’ imprisonment and a fine between € 6,000 to € 30,000 are applicable. Intermediaries, such as distributors, importers, holders or exporters of infringing goods, also face criminal prosecution.
Copyright infringers face imprisonment of up to one year and a fine ranging from € 2,900 to € 15,000. Provided that aggravating factors exist, imprisonment may be increased to 10 years and the fine to € 34,075.
Is it possible to take action against counterfeiting and piracy over the Internet?
Rights holders are entitled to take action against infringements that occur through the internet and in particular to request the blocking of access to illegal content in the case of online infringement (Articles 11 and 13 of Presidential Decree 131/2003 which transposed into Greek Law the E-commerce Directive 2000/31). Copyright holders in particular, may also apply for an injunction against intermediaries (ISPs) who facilitate access to third party infringers (Article 64A of the Copyright Law) such as websites that are used for the dissemination of music and films.
Trademark or design holders may also take action against on-line marketplaces offering counterfeit goods, requesting for instance the blocking of the website’s accessibility in Greece.