Zara trademark saga: the Greek head comes to the surface

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Zara trademark saga: the Greek head comes to the surface

Sponsored by

patrinos-logo.png
church-6982224.jpg

Manolis Metaxakis of Patrinos & Kilimiris reports on a notable judgment in the Zara trademark dispute, highlighting a radical provision in the relevant Greek legislation and the ruling’s alignment with EU case law

The dispute between Inditex, the Spanish fashion group, and Ffauf Italia SpA, the Italian food producer, has, not surprisingly, a Greek head as well. It is well known, after all, that the dispute resembles the Lernaean Hydra. In Greece, Inditex sought to have some of Ffauf’s national trademark registrations, relating to ‘Pasta Zara’, revoked on the basis of non-use.

The specialised division on intellectual property matters of the Athens Court of Appeal delivered a judgment in this respect on July 11 2024. Setting aside the legacy of the dispute, this judgment is notable because it is the fruit of the most radical provision of the Greek Law on Trademarks, No. 4679/2020.

According to that provision, all decisions on invalidity and revocation actions (but not on oppositions) filed and decided at the administrative level – that is to say, before/by the Hellenic Industrial Property Organisation – shall be reviewed by the civil courts; i.e., by the specialised divisions on intellectual property matters of the first-instance court and the Athens Court of Appeal.

As regards the merits of the case, the court emphasised that when assessing whether use of the trademark is genuine, regard must be had to all the facts and circumstances to assess whether the commercial exploitation of the mark in the course of trade is real. The court also clarified that it is sufficient that a trademark has been used during a part of the five-year period applicable for the trademark not to be subject to the sanctions of revocation.

Finally, it was held that the use of a trademark by a company that is economically linked to the proprietor of the mark is presumed to be use of that mark with the consent of the proprietor and is therefore to be deemed to constitute use by the proprietor.

This is in full line with EU case law, which served as a basis for the court to provide a well-reasoned judgment, bearing in mind that the court had to consider several types of evidence to assess whether the use concerned amounts to genuine use of the trademark registrations challenged.

It seems that the Greek legislator had a point with the aforementioned reform, which is good news for all cases, either with a domestic or international flair.

more from across site and ros bottom lb

More from across our site

Lawyers at A&O Shearman discuss six clauses typically found in brand licenses and identify the main points to consider
Deborah Kirk will head up Skadden’s IP and technology transactions team
The firm, which recently added high-profile IP lawyer Joel Smith to its cross-disciplinary practice, wants to respond to clients’ shifting demands
Counsel in Germany, Brazil, and Colombia explain what a US ruling on anti-suit injunctions in a FRAND case means for their advice to clients
Data outlining practitioners’ hopes for the UPC plus news of two major patent licence agreements were among the biggest IP developments this week
Kit Crumbley reveals his plans at Bracewell now that he can officially represent clients at the PTAB
Counsel at five law firms explain some of the trends affecting their businesses, such as difficulties holding onto young talent
A judge left baffled by a Federal Circuit ruling concerning claim construction recused himself from reviewing the patent dispute
Mr Justice James Mellor said the problem of forum shopping in FRAND cases is likely to multiply given the launch of the UPC
Law firms should act now to highlight their credentials for the next research and awards cycle
Gift this article