In February 2019, a trademark application for restaurant services was filed in Greece and the mark was registered in September that year. However, a third party claimed that it had been operating restaurants in Athens and Piraeus under the same name as its distinctive title since 1995.
In the main proceedings brought by the third party against the trademark owner before the Athens Multi-Member Court of First Instance, it sought an order prohibiting the latter from using its trademark within the territory in which its restaurants operate; namely, the municipalities of Athens, Piraeus, and certain neighbouring municipalities.
The court’s findings
By Decision No. 2972/2024, the court upheld the action. It first recalled that the principle of priority applies irrespective of how rights in a distinctive sign are acquired – whether through registration or use in trade – and that, accordingly, earlier unregistered distinctive signs prevail over later registered trademarks.
The court then analysed the concept of an “earlier right which only applies to a particular locality” under Greek trademark law and the EU Trademark Regulation. It held that all rights in distinctive signs acquired through use in trade within a specific territory fall within that concept.
The court further stated that where the use of a distinctive title in a particular locality pre-dates the filing and registration of a trademark, the distinctive title prevails over the trademark pursuant to the priority principle.
Notably, the court accepted that the provisions under which the owner of a later trademark cannot prevent the use of an earlier local right within the territory where that right is used merely constitute another manifestation of the equality principle between unregistered signs and registered trademarks. In doing so, the court appears to suggest that the application of that principle is not confined to this particular instance.
Accordingly, the court did not merely recognise a right of the earlier local sign to be tolerated by the later trademark. Rather, it held that the former prevails over the latter and may exercise its prohibitory powers against it within the territory in which it is used.
It may therefore be concluded that the court clearly recognised that an earlier right, although limited to a particular locality, remains prior within the territory where it is used and thus retains the exclusive rights afforded to intellectual property within that territory.
Lastly, it should be noted that use of the earlier distinctive title in Greece’s most densely populated municipalities could have been found to constitute nationwide use in trade, thereby rendering the locality factor irrelevant. The court could have reached that conclusion regardless of the plaintiffs’ legal characterisation of the facts.
Significance and appeal proceedings
The above decision is noteworthy. While conflicts between earlier unregistered signs and later registered trademarks are not in themselves considered a complex legal issue, this specific case of a conflict between a later trademark and an earlier right to a distinctive sign of a particular locality is hardly encountered in Greek case law and legal theory, thus constituting a somewhat uncharted area.
The case is pending before the Athens Court of Appeal, with a decision expected within the next few months.
