How are piracy and/or counterfeiting defined?
Under the existing legal framework piracy and counterfeiting are not identical terms. Piracy on the one hand, is used in order to describe the infringement of copyright protected works such as music, audiovisual works, computer programs, publications and radio/television broadcasts, literary works, etc., through acts such as the unauthorized reproduction, broadcasting, distribution and sale of non-authorized copies of such works.
Counterfeiting on the other hand, is defined as the practice of manufacturing, importing/ exporting, distributing, selling or otherwise dealing in goods, which are often of inferior quality, on which a trademark, that is identical to a registered trademark, has been placed without the authorization of the rightful trademark owner. Genuine products, on which the trademark of the right holder is placed, contrary to his intention to place them on the market as no-name products, also qualify as counterfeits. Counterfeits are most commonly called “fake goods” or “knock-offs.”
Counterfeiting is also used in order to describe the copying, imitating or using of a registered industrial design.
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 take action 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. Special criminal provisions are included 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.
What is the protection afforded to rights holders?
For a copyright protected work, its creator/author has the absolute discretion, power and control to decide how to commercially exploit it but also to prohibit any act that infringes such rights.
A trademark owner enjoys the exclusive right to affix the sign to the goods and/or their packaging, to place the goods on the market, to import or export the goods etc. At the same time, he 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, 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 the product are all acts that fall under the prohibition.
What is the recourse available against counterfeiting and piracy?
Both, piracy and counterfeiting are prohibited and punishable by both civil and criminal law. Generally, copyright holders and trademark /design 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.
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 checks or of targeted actions initiated by the customs authorities in case valid suspicions regarding the infringement of IP rights exists.
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 Regulation 608/2013), once suspicious goods have been found. If no application has been filed, then the authorities will contact any person or entity (e.g. rightsholder) entitled to submit such an application and inform them of the alleged infringement.
How does the process work?
Once the customs authorities have identified goods suspected of infringing an IPR covered by a decision granting an application, they shall suspend the release of the goods or detain them and inform the declarant or the holder of the goods, about the suspension of the release of the goods within one working day. At the same time they shall notify the rights holder. If no application has yet been filed then the customs authorities shall notify persons or entities entitled to submit an application concerning the alleged infringement of the IPRs.
Do customs authorities have the power to destroy counterfeit/pirated goods?
The customs authorities may proceed to the destruction of the goods, without the need to determine whether they infringe an IPR, under the condition that the rightsholder confirms within 10 days (3 days in the case of perishable goods), in writing that he believes 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. The goods will be destroyed provided that both the rights holder and the declarant or the holder of the goods, grant their consents. In case such consent is not given, then the holder of the decision must 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 checks conducted on the 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.
What is the process in order to destroy on the spot, counterfeit goods?
In order for the goods to be destroyed on the spot, the main requirement is that the holder of the goods does not object. Should this be the case, then he has the right to file a written objection, while being granted a deadline in order to prove that the goods are genuine/non-infringing. In the meantime, the authorities will also inform the rightsholder 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 period of 3 days in order to oppose such statement, following which the rights holder will have an additional 10-day term in order 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.
Are there more specific rules for copyright infringements?
Especially for copyright protected works, the Financial Police (SDOE), the Police, the Coastguard and the Customs authorities are empowered to fine any person who illegally reproduces, sells or otherwise distributes to the public or possesses with the purpose of distributing a computer program. This includes street vendors, standing persons (outside of shops), or vendors inside of shops.
What legal actions can the right holder take against the infringer?
Rights holders have civil remedies against the infringers if they wish to initiate legal proceedings before the courts in order to claim damages or to obtain judgments in order to prevent future infringements by the same infringers. In fact, for infringements that concern identical marks being used for identical products, the plaintiff only has to provide the Court with the registration certificate of the trademark which will be sufficient to prove the infringement.
Other remedies include:
- cessation of the infringement
- its omission in the future
- the payment of damages
- the seizure of the goods and their removal from the market (at the expense of the infringer),
- the removal of materials and implements principally used in the creation or for the manufacturing of the said goods
- the destruction of the infringing goods
- the publication of the court’s decision in the media
These remedies may also be ordered against intermediaries whose services are used in order to infringe the plaintiff’s rights.
Is provisional judicial protection available?
In urgent cases where expedited action is called for, interim injunctions (injunctive relief), is also available. It is also possible to seek a provisional court order, 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?
In trademark infringement matters, rightsholders may indeed seek damages and may claim the amount that the infringer would have paid for royalties, had he been granted a license. If damages are not calculated on this basis then, the factors that are taken into account by the court, include among other things, the negative economic effects the infringement has for the rights holder, the loss of profits and any benefits enjoyed by the infringer. If it is established that the infringer had no liability (i.e., if it was not for him possible or 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 infringements, 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?
Indeed, it is possible, either in the process of an ongoing trial or following a petition for an interim injunction, for the court to order the infringer to provide information regarding the origin of the products and the distribution networks used. The same may be ordered also against anyone:
- found to illegally possess the infringing goods,
- found to possess such goods on a commercial scale,
- found to provide services that facilitate the infringement of a trademark
- or anyone who 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.
Is criminal prosecution available?
Both piracy and counterfeiting (designs excluded) are criminal offenses and the respective laws contain provisions that make their prosecution possible. Other, general criminal law provisions, such as those for forgery or fraud may also be 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 rightsholder, within three (3) months from the day on which he became aware of the infringement. In contrast, in cases of piracy (copyright infringement) authorities can launch the investigation without the need for a criminal complaint having been filed by the rights holder. In both cases however, in order for the infringer to be prosecuted the investigation will have to establish that the infringement was indeed intentional.
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?
For infringements that occur through the internet, rightsholders have the right to request the blocking of access to websites that promote illegal content. Copyright holders in particular, may also apply for an injunction against intermediaries (ISPs) who facilitate access to third party infringers 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.