Trade Marks in Cyprus: Registration, Protection and Infringement of Trade Marks and Community Trade Marks in Cyprus
Contributed by Andreas Neocleous & Co LLC
15 January, 2012
Contributed by Andreas Neocleous & Co LLC. [www.neocleous.com]
The legislative framework governing the registration and protection of trade marks in Cyprus consists of the Cyprus Trade Mark Law, Cap. 268 (Trade Mark Law) and the Trade Mark Regulations (the Regulations), as amended from time to time. Amendments to the existing framework were effected in order to transpose European Union instruments into the Cypriot legal order.
Under the Trade Mark Law, a trade mark may be comprised of names, words, logos, symbols, numbers, designs, images, the shape of goods, colours, sounds and smells or the combination of a number of these elements that constitute a sign. This sign must be presentable visually (i.e. graphically) and its primary objective is to be distinguishable from the goods or services of the undertaking so registering this sign.
Reasons for Trade Mark Registration
The registration of a trade mark as a distinctive, proprietary sign or mark of an undertaking, serves a number of purposes:
- The sign is an asset with goodwill attached to it and requires protection from unauthorized use;
- Exclusive usage rights are afforded to its proprietor in relation to the goods or services it relates;
- Registration ensures legal protection to its proprietor and can be a solid basis for legal proceedings against unauthorised use on behalf of third parties;
- The proprietor of the trade mark is able to license or assign the trade mark to third parties;
- Registration enables the proprietor to prevent third parties from registering identical or similar signs for the same (or in some cases different) goods or services without prior authorization;
- Registration enables the proprietor to prevent third parties from importing goods that the same or similar mark without prior authorization.
Applications for the registration of trade marks in Cyprus of different classes must be made individually, despite the mark applied for being identical for each class filed and they are addressed to the Registrar of Trademarks, which is the competent authority for the registration of trademarks in Cyprus. The application procedure itself, which is an activity reserved to regulated Advocates under the Advocates Law, Cap. 2, must contain a duly completed and executed application form, the supplementary forms containing the mark applied for and the relevant type of authorisation for the person filing the application.
The application for trade mark registration, once accepted and allocated with an application number, is examined by the office of the Registrar of Trademarks Office on both absolute and relative grounds. The outcome of a trade mark application will either be: unconditional acceptance of the registration, conditional acceptance of the registration or rejection. A rejected applicant is afforded with the opportunity to submit a written submission and be heard before the Registrar of Trade Marks.
Following its examination and approval of registration, the approved trade mark in question is published in the Official Gazette of the Republic of Cyprus. Any person within two months of such publication may give notice of opposition to such registration, to be filed with the Registrars Office. The applicant may wish to proceed with the filing of a counterstatement and both parties will have the opportunity to present their case through written addresses and affidavits. After hearing both parties and considering all evidence filed, the Registrar will determine whether the mark in question must proceed to registration or not. The unsuccessful party is allowed to offend the Registrars decision before the Supreme Court.
Validity of a Cyprus Trade Mark
The Registrar of Trade Marks issues Trade Mark Certificates for each approved and registered trade mark. The date stated on the Trade Mark Certificate is the date of the original application for registration and is also the date from which protection and validity of the trade mark commences. The first period of validity lasts for seven years, upon the expiration of which renewal is necessary and thereafter this period is every four years.
Any interested party may apply to court or to the registrar to have a registered trademark removed from the register in respect of any goods or services for which it is registered, on the following grounds:
- The trademark was registered without any good-faith intention on the part of the applicant that it be used in relation to the relevant goods or services, and there has been no good-faith use of the trademark in relation to those goods or services up to one month before the date of the application.
- There has been no good-faith use of the trademark for a continuous period of five years or more.
Unless the applicant for revocation has been allowed to register an identical or similar trademark in respect of the relevant goods or services, or the court or registrar is of the opinion that it might properly be permitted to do so, the court or registrar may refuse an application for revocation in relation to any goods or services if it is shown that there was good-faith use of the trademark in respect of the goods or services for which the mark is registered before the relevant date or during the relevant period.
If there is substantial use of the trademark after the initial five year-period has expired but before the application for revocation, the registration will not be cancelled, unless the use takes place in the three months before filing of the revocation and after the owner becomes aware that a revocation application might be filed.
If the owner of a registered trademark has not substantially used the mark for a period of five years, it may not use the mark as a basis for cancellation or opposition to the registration of a later trademark.
For the purposes of proving use, use of a trademark which varies from the mark as registered is acceptable as long as this variation does not substantially affect the character of the trademark. The use of a trademark solely for export purposes is also acceptable.
Owners of registered trademarks can commence court actions for both infringement and passing off. Under the Trade Marks Law, the owner of a registered trademark has the exclusive right to use the mark in relation to the goods for which it is registered. This right is infringed where an unauthorised third party uses a mark that is identical to the registered mark - or that so closely resembles it as to be likely to deceive or cause confusion - in the course of trade in relation to any goods for which it is registered (or in relation to dissimilar goods if the registered trademark is famous), and in such manner as is likely to be regarded either:
- As use as a trademark.
- Where the mark is used on or in physical proximity to the goods, or in an advertising circular or other advertisement issued to the public, as importing a reference to someone who is the owner or authorised user of the mark, or to goods with which such person is connected in the course of trade.
The owner of the registered trademark bears the burden of proving that the resemblance is deceptive. Anyone claiming damages for unauthorized use of a sign or mark not registered as a trade mark will only be able to file proceedings for passing off, a civil wrong/tort under Cyprus Law and not for infringement under the Trade Marks Law.
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