Priority on the internet does not override the temporal priority principle which governs industrial property law

Multi-member Court of First Instance of Athens (Polimeles Protodikio Athinon) (Special Commercial Section)

Decision No 2923/2015

First Published at IPrigths.GR

• The rule “prior in tempore potior in iure” is applicable in conflicts between trademarks and distinctive signs

• A distinctive sign defeats a trademark if its use in trade is prior to the trademark registration.

• The domain name of a company is legally qualified as a distinctive sign in the sense of article 14, sect. 1, para. 1 of Law No 146/1914. It may be qualified as company name, in case that the company has operated first on the internet.

• The registration of a distinctive sign on the internet does not offer any precedence against distinctive signs of the “offline world” and vice versa.

• The use of a distinctive sign made by a licensee does not establish any priority right opposable the licensor.

Key-words: Trade Mark, Community Trade Mark, Community Trade Mark Court, Trade Mark infringement, identity of Trade Marks, similarity of Trade Marks, similarity of goods and services, risk of confusion, distinctive sign, company name, distinctive sign licence, domain name repeal, domain name erasure, distinctive signs conflict

Legal provisions: Community Trade Mark Regulation No 207/2009, art. 1, 4, 9, 14; Law No 2943/2001 [Law establishing Greek Community Trade Mark Courts], art. 6-11; Law No 146/1914 [Greek Unfair Competition Act], art 1, 13; Law No. 213/1975 [Ratification of Madrid Protocol], art. 8