Overview

1. Are there any restrictions on the establishment of a business entity by a foreign licensor or a joint venture involving a foreign licensor, and are there any restrictions against a foreign licensor entering into a licence agreement without establishing a subsidiary or branch office?

No such restrictions exist in Greece; foreign licensors may freely establish a business entity or a joint venture in Greece, on the same terms as domestic licensors. Furthermore, foreign licensors may enter licence agreements without establishing subsidiaries or branch offices in Greece.

Kinds of licences

2. Identify the different forms of licence arrangement that exist in your jurisdiction.

In Greek jurisdiction, the applicable types of licence agreements expressly recognised by national legislation are the following:

• trademark licence agreements (Law No. 2239/1994, article 16);
• patent licence agreements:
• contractual licence (Law No. 1733/1987, article 12)
• non-contractual licence (Law No. 1733/1987, article 13); or
• licence to the public sector (Law No. 1733/1987, article 14);
• technology transfer licence agreements (Law No. 1733/1987, articles 21 and 22);
• designs or utility models licence agreements (Presidential Decree No. 259/1997, article 19);
• copyright licence agreements (Law No. 2121/1993, articles 13, 14 and 15); and
• software licence agreements (Law No. 2121/1993, article 40).

Other types of licence agreements, such as character or celebrity licensing may be enforced under general copyright and contract law provisions.

Law affecting international licensing

3. Does legislation directly govern the creation, or regulate the terms, of an international licensing relationship? Describe any such requirements.

The same general contract law provisions apply to both domestic and international licence agreements (Civil Code, articles 4 and 7). As such, agreements are governed by certain mandatory provisions in the Civil Code (article 3, ‘rules of public order’; article 174, ‘prohibited contracts’; articles 178 and 179, ‘contracts contrary to moral ethics’; article 281, ‘abuse of rights’; articles 294, ‘legal interest rate cap’, etc). Provided the general contract law threshold requirements are met (the contract being the product of the free and equal bargain of the parties), the parties are free to regulate the terms of the licence as liberally as they wish.

4. Are there any pre or post-grant disclosure requirements, or any requirements to register with local authorities, with respect to any international licensing rights to be granted in your jurisdiction? Do these requirements still apply if your jurisdiction forms part of a multi-jurisdictional territory in respect of which rights are being granted?

There are no pre or post-grant disclosure requirements. Requirements for the registration of licences with the respective local authorities are as follows:

• in relation to trademarks, the licence should be recorded with the Greek Trademark Office; and
• in relation to patents, designs, utility models, the license should be recorded with the Greek Patent Office.

When Greece forms part of a multijurisdictional territory in respect of which rights are being granted, the registration requirements are as follows:

• in relation to European patents, designs or utility models validated in Greece and PCT patents designating Greece, the licence should be recorded with the Greek Patent Office; and
• in relation to international trademark registrations designating Greece, the licence should be recorded with the Greek Trademark Office.

Community trademark licences need not be recorded locally but centrally with the Office for Harmonisation in the Internal Market (OHIM).

5. Are there any statutorily or court-imposed implicit obligations in your jurisdiction that may affect an international licensing relationship, such as good faith or fair dealing obligations or the obligation to act reasonably in the exercise of rights?

As indicated above, licence agreements are governed by general contract law provisions of the Greek Civil Code; the main contract law principles apply to a licence agreement as they would in any other type of contract. The courts have not developed any particular ‘trend’ or case law (although Greece is not a common-law jurisdiction) that would underlie the interpretation of licence agreements in a special manner different to other contracts.

6. Does the law in your jurisdiction distinguish between licences and franchises? If so, under what circumstances, if any, could franchise law or principles apply to a licence relationship?

Franchising as such is not regulated under Greek law; several pieces of general Civil Code provisions and of EU law are applicable, together with a National Code of Ethics for Franchising and other general licensing provisions. In that sense, no franchise law principles apply to licensing.

Intellectual property issues

Is your jurisdiction party to the Paris Convention for the Protection of Industrial Property? The Patent Cooperation Treaty (PCT)? The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)?

Greece is a party to all the aforementioned conventions and treaties and, specifically, has been a member of the Paris Convention since 2 October 1924, a member of the Patent Cooperation Treaty (PCT), since 9 October 1990 and a member of TRIPs. As an EU member by virtue of the European Council’s Instrument of Acceptance dated 30 November 2007, Greece is also aligned with the Geneva Protocol Amending the TRIPS Agreement, dated 30 December 2005. Greece, as an EU member state, is also a member of the CTM system. Also, Greece is a party to:

• the Madrid Protocol for the International Registration of Marks (since 10 August 2000);
• the Berne Convention for the Protection of Literary and Artistic Works (since 9 November 1920); and
• the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (since 6 January 1993).

8. Can the licensee be contractually prohibited from contesting the validity of a foreign licensor’s intellectual property rights or registrations in your jurisdiction?

Such a contractual prohibition may be allowed provided, however, that it is not abusive.

9. What is the effect of the invalidity or expiry of registration of an intellectual property right on a related licence agreement in your jurisdiction?

Once an intellectual property right (IPR) expires, a related licence is automatically rendered, ipso jure, terminated, as it lacks subject matter.

10. Is an original registration or evidence of use in the jurisdiction of origin, or any other requirements unique to foreigners, necessary prior to the registration of intellectual property in your jurisdiction?

There is no prerequisite for evidence of prior use or prior registration of IPR in the jurisdiction of origin applicable to foreign entities or individuals in order to register such rights in Greece.

11. Are there particular requirements in your jurisdiction: for the validity of an intellectual property licence; to render an intellectual property licence opposable to a third party; or to take a security interest in intellectual property?

For the validity of a licence agreement as a contractual relationship, the general contract law provisions of the Civil Code as mentioned above, apply. For a licence to be valid for all other purposes in Greece, it must be recorded in the appropriate registry for trademarks, patents, utility models or designs, etc, with the exception of copyright, since no copyright registry exists in Greece.

12. Can a foreign owner or licensor of intellectual property institute proceedings against a third party for infringement in your jurisdiction without joining the licensee from your jurisdiction as a party to the proceedings? Can an intellectual property licensee in your jurisdiction institute proceedings against an infringer of the licensed intellectual property without the consent of the owner or licensor? Can the licensee be contractually prohibited from doing so?

The licensor of any IPR may institute proceedings for infringement without joining the licensee. The licensee may, in trademark matters, institute infringement proceedings only with the written consent of the trademark owner (Law No. 2239/1994, article 16(4)). In patent matters, the licensee of an exclusive licence, is not explicitly required to obtain such a written consent (Law No. 1733/1987, article 17(3)). In copyright matters, legal theory and case law recognise the legitimate interest of the licensee to initiate infringement proceedings without the licensor’s consent being expressly required. The contractual prohibition of the licensee’s right to initiate infringement proceedings is allowed in trademark patent and copyright matters provided, however, that it is not abusive.

13. Can a trademark or service mark licensee in your jurisdiction sub-license use of the mark to a third party? If so, does the right to sub-license exist statutorily or must it be granted contractually? If it exists statutorily, can the licensee validly waive its right to sub-license?

Sub-licensing of marks is allowed as per Law No. 2239/1994, article 16(3). This right must be granted contractually and recorded.

14. Can an unregistered trademark be licensed in your jurisdiction?

Unregistered trademarks can be licensed in Greece.

15. Is your jurisdiction a ‘first to file’ or ‘first to invent’ jurisdiction? Can a foreign licensor license the use of an invention subject to a patent application but in respect of which the patent has not been issued in your jurisdiction?

In terms of registered patent rights, Greece is a ‘first to file’ jurisdiction, by considering also conventional priority rights referred to in the patent application, wherever available. However, in the case of unregistered rights, Greek IP legislation also offers protection in the ‘first to invent’ direction by allowing several routes of protection to an inventor asserting
prior rights of invention to a given patent. A foreign licensor can license an invention for which the patent has not been issued in Greek jurisdiction.

16. Can the following be protected by patents in your jurisdiction: software; business processes or methods; living organisms?

Article 5 of Law No. 1733/1987 states that an invention can be patented if it is novel, it is not part of the prior ‘state of the art’ and it is susceptible to industrial application. Software and business processes are expressly excluded as patentable, due to lack of inventiveness as per article 5(2)(a) and (c) respectively. Living organisms are also excluded under article 5(8)(b).

17. Is there specific legislation in your jurisdiction that governs trade secrets or know-how? If so, is there a legal definition of trade secrets or know-how? If not, how are trade secrets and know-how treated by the courts?

Law No. 146/1914, Art. 16, 17, 18. refers to trade secrets or know-how as:
… any confidential information of a commercial nature given to an employee or contractor during and for the course of his employment or information that came to the employee’s/contractor’s attention at the time of his employment, cannot be given to a third party for the purpose of competition, during the course of employment.

18. Does the law allow a licensor to restrict disclosure or use of trade secrets and know-how by the licensee or third parties in your jurisdiction, both during and after the term of the licence agreement?

During the term of licence agreement, Law No. 146/1914 dealing with unfair competition allows the licensor to restrict disclosure of trade-secrets and know-how by the licensee. Greek courts are likely to be conservative in applying restrictions to a great extent after the contractual relationship is over, unless they are a valid part of the contract that was freely entered into and that imposes on neither party any disproportionally great disadvantage and complies with generalcontract law provisions.

19. What constitutes copyright in your jurisdiction and how can it be protected?

According to Law No. 2121/1993, article 2 the definition of ‘copyrighted material’ is:
any original intellectual production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, whether orally or in writing.
The only means of protecting copyrighted material in case of infringement is the use of hard evidence or witness testimony (or both), given the fact that no copyright registry per se or any other means of official registration or recordal of copyrighted material exists in Greece.

20. Is it advisable in your jurisdiction to require the contractual assignment of copyright by the licensee to the licensor for any artwork, software improvements and other works that the licensee may have contributed to?

It is indeed advisable to ensure that, for any licensed material that the licensee has contributed to in terms of its improvement, a standard clause be included in the licence agreement of an automatic assignment of copyright in relation thereto.

Software licensing

21. Does the law in your jurisdiction recognise the validity of ‘perpetual’ software licences?

In Greece, the law does not recognise ‘perpetual’ software licences. As per Law No. 2121/1993, article 15(2), if there is no contractually specified duration for the licence, and unless the local custom and business practices do not point towards a different conclusion, the duration of the licence will be deemed as limited to five years.

22. Are there any legal requirements to be complied with prior to granting software licences? In particular, are there import or export restrictions on software?

No specific pre-granting requirements apply to software licences in Greece. In relation to import–export restrictions, and specifically with regard to the EU, as per the provisions of Law No. 2121/1993 article 41 and EU Directive 2009/24, the first sale of a copy of a software program effectively exhausts the rights of the rights holder in terms of the subsequent distribution of the software with the exception of the right to control rental of the software program or a copy thereof.

23. Who owns improvements and modifications to the licensed software? May a software licensee obtain bug fixes, upgrades and new releases from the licensor in the absence of a contractual provision to that effect?

As per the provisions of articles 42 and 43 of Law No. 2121/1993 and the relevant legal theory, ownership of the improvements and modifications is established in favour of the licensee or creator only if the extent of the individuality of the modified or improved software is such to render it a new product.
In the absence of a contractual provision to that effect, a software licensee is not entitled to obtain bug fixes, upgrades and new releases from the licensor, as long as these are not needed for the operability of the licensed product.

24. May a software licensor include a process or routine to disable automatically or cause unauthorised access to disable, erase or otherwise adversely affect the licensed software?

As per the provisions of EU Directive 2009/24, and in particular article 4, there are certain rights exclusive to a rights holder, and they include the loading, displaying, running, transmission, etc of the software. The analogous provisions can be found in article 42 of Law No. 2121/1993. The foregoing provisions imply rights for a licensor to disable or cause the denial of access or the erasing or any other similar precautionary act against any third party that uses the licensed software without proper authority.

25. Have courts in your jurisdiction recognised that software is not inherently error-free in determining the liability of licensors in connection with the performance of the licensed software?

Though the particular issue has not yet, to our knowledge, been dealt with by case law, on the basis of the provisions of Law No. 2121/1993 (in particular article 42), the inherent errors of software programs are recognised as such. The aforementioned provision allows the licensee to make any necessary amendments for the operability of the licensed software and deal with expected errors without requiring the licensor’s authorisation; that indicates that the licensor would not, in the case of routine errors, be likely to be held liable. In any event, the licensor’s liability is a question of fact and its extent would depend on the extent of the error and the impact of the errors on the licensee’s activities, etc.

26. Have courts in your jurisdiction restricted in any manner the enforceability or applicability of the terms and conditions of public licences for open source software (ie, GNU and other public licence agreements)?

The Greek courts have not restricted the enforceability or applicability of the terms and conditions of public licences for open source software.

Royalties and other payments, currency conversion and taxes

27. Is there any legislation that governs the nature, amount, manner or frequency of payments of royalties or other fees or costs (including interest on late payments) in an international licensing relationship, or requires regulatory approval of the royalty rate or other fees or costs (including interest on late payments) payable by a licensee in your jurisdiction?

Law No. 2121/1993 has special provisions pertaining to royalty fees and, as per article 32, royalty fees are generally calculated on the basis of an agreed percentage on the gross expenditure or gross revenue or the combination of both; an advance lump sum is allowed whenever it is impossible to monitor and calculate the percentage or it would be disproportionally expensive to apply such a monitoring or calculating system for this purpose. Late payment interest rates are valid only up to the maximum rate determined by law.

28. Are there any restrictions on transfer and remittance of currency in your jurisdiction? Are there any associated regulatory reporting requirements?

No currency restrictions exist in Greek jurisdiction.

29. In what circumstances may a foreign licensor be taxed on its income in your jurisdiction?

A foreign licensor may be taxed on its income or not, depending on the existence and content of a bilateral treaty for the avoidance of double taxation between its country and Greece.

Competition law issues

30. Are practices that potentially restrict trade prohibited or otherwise regulated in your jurisdiction?

Law No. 703/1977 as revised in part by Law No. 3784/2009 is fully harmonised with EU competition law and applies with regard to licensing, thus prohibiting or regulating practices that restrict trade.

31. Are there any legal restrictions in respect of the following provisions in licence agreements: duration, exclusivity, grant-back provisions and non-competition restrictions?

Duration, exclusivity, grant-back and non-competition provisions may be freely agreed between the parties to the licence agreement as long as they are not abusive and do not infringe competition law.

Indemnification, disclaimers of liability, damages and limitation of damages

32. Are indemnification provisions enforceable? Is insurance coverage for the protection of a foreign licensor available in support of an indemnification provision?

Indemnification provisions are enforceable in Greece as per article 11 and 16 et seq of Insurance Law No. 2496/1997. The aim is to provide restitution of damages, as long as there is sufficient causal link between the cause and the effect of the damage and, above all, to prevent any unjust enrichment from the insurance policy itself. As per a particular revision in the law, the relevant provisions were redrafted to ensure that insurance of immaterial as well as material objects is feasible and this would include indemnification coverage of the licensor.

33. Can the parties contractually agree to waive or limit certain types of damages? Are disclaimers of liability generally enforceable? What are the exceptions, if any?

The parties may contractually waive or limit the types of damages available as well as including waivers of liability, but not when liability is based on gross negligence or tort, in which cases the relevant clause would be null.

34. Does the law impose conditions on, or otherwise limit, the right to terminate or not to renew an international licensing relationship; or require the payment of an indemnity or other form of compensation upon termination or non-renewal?

No licence-specific regulations in terms of the conditions, termination, renewal, etc exist in Greek jurisdiction.

35. What is the impact of the termination or expiration of a licence agreement on any sub-licence granted by the licensee, in the absence of any contractual provision addressing this issue?

The expiration of the licence agreement would automatically result in the termination or expiration of any relevant sub-licence.

Bankruptcy

36. What is the impact of the bankruptcy of the licensee on the legal relationship with its licensor and any sub-licence that the licensee may have granted? Can the licensor structure its international licence agreement to terminate it prior to the bankruptcy and remove the licensee’s rights?

The bankruptcy of the licensee ends its legal relationship with both the licensor and any sub-licensee. The licensor can structure its international licence agreement to terminate prior to the bankruptcy and remove the licensee’s rights, provided that such point prior to the bankruptcy is objectively identifiable.

Governing law and dispute resolution

37. Are there any restrictions on an international licensing arrangement being governed by the laws of another jurisdiction chosen by the parties?

The parties to an international licensing agreement may freely choose its governing law, irrespective of jurisdiction.

38. Can the parties contractually agree to arbitration of their disputes instead of resorting to the courts of your jurisdiction? If so, must the arbitration proceedings be conducted in your jurisdiction or can they be held in another?

In Greece, there is no national law regulating international arbitration per se, only national arbitration. Arbitration can take place in Greece or in any locale the parties agree to in the arbitration clause itself. There is no requisite for arbitration to take place in Greece in order to ensure the arbitral award is enforceable in Greece, as this would violate the provisions of the applicable conventions to which Greece is a signatory.

39. Would a court judgment or arbitral award from another jurisdiction be enforceable in your jurisdiction? Is your jurisdiction party to the United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards?

Greece is a party to the United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards (the New York Convention of 1958, which was ratified by Greece by Law No. 4220/1961), and is also a member of UNCITRAL (which was ratified in Greece by Law  No. 2735/1999); therefore, provided that the particular requirements on the enforceability of foreign court decisions or arbitral awards are met, such decisions or awards are enforceable in Greece.

40. Is injunctive relief available in your jurisdiction? May it be waived contractually? May the parties waive their entitlement to claim specific categories of damages in an arbitration clause?

Injunctive relief, including the issuance of temporary restraining orders, is available in Greek jurisdiction. Parties cannot waive their rights to such legal proceedings contractually as they are part of their basic civil rights to justice and judicial protection, even in its less permanent form. Nevertheless, the parties may waive their entitlement to claim specific categories of damages in an arbitration clause, provided that such waiver is not abusive.