Macedonian trademarks: The next day
With the Prespes Agreement now being an accomplished reality, and with the International Experts Committee of paragraph 8 Article 3 of Part 1 of the Agreement, which will be required to regulate copyright issues between the two countries, the following questions are genuinely raised by entrepreneurs whose trademarks contain the word “Macedonia” or its derivatives:
- After the Prespes Agreement, has the procedure for the registration of trademarks containing the word “Macedonia” or its derivatives changed?
Until the intellectual property issues will be regulated by the International Expert Group, no change exists in the registration process. Any interested party, if the right is established, can guarantee a trademark incorporating the words “Macedonia”, “Macedonian” and any derivative in Greece and the EU.
- Is the country specific label mandatory?
There is no such obligation now.
- Is it true that special services responsible for receiving trademark applications (Ministry of Development and Economy, European Union Intellectual Property Office – EUIPO) delay the registration of trademarks with the words “Macedonia”, “Macedonian” or its derivative, as rumored to be true in the neighboring country?
This reputation is not true. The procedures in Greece and the EU have not been modified, and the vesting schedules are followed as for all applications. In any case, any delay will only theoretically delay the right to use the trademark and not the starting point of protection, as once the registration is complete – even late – the protection period will start retrospectively from the date of filing the application. The principle of time priority is not removed anymore.
- What steps should be taken by the Greek entrepreneur who wishes to guarantee his/her trademark, which contains the word “Macedonia” or its derivatives?
Anyone claiming a right should immediately file an application for the trademark registration, as patents are based on the principle of time priority of applications. At a protection’s width level, it is preferable to have a European registration – patent, as an application can be marketed throughout the EU, as opposed to the national protection that provides protection only within the Greek borders. Also, at a cost level, the European guarantee is more advantageous. The cost of pledging is calculated based on the number of classes (product/ service categories) to which each trademark corresponds.
Additionally, companies which export their products to the neighboring country – and in any other country is not a member of the EU, should file a registration application through the World Intellectual Property Office (WIPO).
- Are the Greek trademarks at risk from lawsuits on behalf of the neighboring country’s operators on the ground that in the first case the trademarks relate to a region of a State while in the second case they relate to a State?
The neighboring country’s entrepreneurs cannot prevent the use of trademark in the Greek territory as long as: (a) they do not sell their own similar product in the Greek Market, (b) even if their own similar product is sold in the Greek market, they have registered this right after the Greek right holder of the Greek trademark (principle of time priority).
The International Committee of Experts which will be set up in 2019 must preserve and safeguard the above – mentioned international rules on the protection of trademarks in such a way that no unfavorable exceptions are introduced violating the national and European rules for the Greek entrepreneurs.
ATTENTION: As soon as it joins the EU it means that the entrepreneur in that country will have, just like the Greek one, the right to register his/ her trademark across the EU, including Greece, and hence, its trademark will also be protected in Greece, even if the product is only sold and traded only in his/her country.
Therefore, it may prohibit the use of any similar brand – and hence the circulation of the product to which it corresponds – to Greece. That is why it is very important for Greek entrepreneurs to proceed immediately with the registration of their trademarks so that they can guarantee their rights in Greece and the EU in time and so that no one can ban their branding and circulation of their products in Greece and the EU.