Trademark registration in Cyprus. The legal framework.
By: Christophoros Christophi
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Trademark registration in Cyprus. The legal framework.
Trademarks are a symbol of the identity of your business. The original names, phrases, symbols, logos, and designs that you create for your business help to identify your products and services. Consumers will be able to distinguish your offerings from that of competing businesses largely thanks to memorable trademarks.
The visibility of a trademark allows customers to spot and recognize your brand in a crowded marketplace. Recognizable trademarks also help to build a brand’s reputation. An effective trademark can influence the buying decisions of consumers and bring to mind positive, powerful messages about your brand.
The registration and protection of marks in Cyprus in relation to goods and services is governed by the Trade Marks Law, Cap. 268 and by the Regulations of 1951-1992.
Is your mark registrable?
In order for a trademark to be registered, it must comprise of elements, such as for example words, drawings, numbers, colors, sounds, the shape of the product or of its packaging, which meet certain prerequisites.
The proposed mark must:
• be capable of distinguishing the products or services of an enterprise from those of other enterprises;
• determine the object of the protection provided to its beneficiary with clarity and accuracy.
• it constitutes a trademark and does not exclusively concern the general appearance of the product, an invention or a work protected by other types of intellectual property rights.
Absolute reasons of rejection.
Marks that cannot be registered as trademarks, among others, are those comprising of elements that:
• lack distinctive character; suggest the type, quality, quantity, destination, value, geographical origin or time of production or of service provision or other characteristics of the product or service;
• have become common in the vernacular or the established practice of transactions;
• exclusively comprise of the product’s shape or other characteristic imposed by the actual nature of the product or is necessary for the achievement of a technical result or provides substantial value to the product;
• conflict with public order or good morals;
• may mislead the public, as to the nature, quality or geographical origin of the product or service;
• include a coat of arms, flag or other state emblem of countries of the European Union without the licence of competent authorities; include a symbol, emblem, coat of arms or element of great symbolic significance and of special public interest, and particularly religious symbols, representations and words;
• conflict with legislation for the protection of designations of origin and geographical indications, traditional terms of wines, guaranteed traditional speciality products, plant variety rights of the same specie or closely related species;
• the registration’s application was made in bad faith by the applicant.
Relative reasons of rejection.
Marks that cannot be registered as trademarks, among others, are those comprising of elements which:
• are identical to an earlier registered Trademark (national, European, or international with protection in the Republic of Cyprus) or an application for its registration, and the relevant products or services for which its registration is requested are also identical or similar, to such a degree that there is a risk of confusing the public with those for which the earlier mark is protected;
• are similar to an earlier registered Trademark (national, European, or international with protection in the Republic of Cyprus) or an application for its registration, and the relevant products or services for which its registration is requested are also identical or similar, to such a degree that there is a risk of confusing the public with those for which the earlier mark is protected;
• are identical or similar to an earlier registered Trademark (national, European, or international with protection in the Republic of Cyprus) provided that the earlier mark has acquired reputation in the Republic of Cyprus or, in case of a European trademark, has acquired reputation in the E.U., and the use of the later mark without reasonable cause would bring about unfair benefit from the distinctive character or the reputation of the earlier mark or would harm its distinctive character or reputation;
• are contrary to an earlier application for name of origin or geographical indication, according to the legislation of the Republic of Cyprus or the European Union, whereby the right of prohibition of use of the later mark is conferred;
• are contrary to an earlier non-registered mark or other distinctive element that is used in transactions, which provides to the beneficiary the right of prohibition of use of the later mark;
• their use may be prohibited pursuant to an earlier right over the name, personality, authors’ rights or a right of industrial ownership;
• may create confusion with a mark that has been registered and is used within the territory of the Republic of Cyprus at the time of submission of an application for registration, if this was made in bad faith;
• the application for registration was submitted in the name of and without the licence of the beneficiary.
Applying for national trademark.
Once you are satisfied that your mark meets all the prerequisites for protection, you can proceed with the submission of an application for its registration in the Republic of Cyprus.
The application for registration of national trademark can be submitted, either through the trademark’s e-filing system or by hand / post, accompanied by:
• representation of the mark in case it is not word trademark;
• in case where priority is claimed, the following are attached:
i. statement regarding the date and the country of earlier filing;
ii. certified copy of the earlier filing or certificate of filing by the competent authority; certified translation in the Greek language of the priority documents;
The estimated time limit for completion of an application in Cyprus provided there is no objection by any party is 2 months.
The trademark will then be entered in the relevant Class according to the Nice Classification.
Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. It is updated every five years and its of the system groups products into 45 classes (classes 1-34 include goods and classes 35-45 embrace services), and allows users seeking to trademark a good or service to choose from these classes as appropriate. Since the system is recognized in numerous countries, this makes applying for trademarks internationally a more streamlined process.
Application’s publication and objection.
Provided that your application is accepted for registration, the Intellectual and Industrial Property Section proceeds with the publication of the decision in the Official Gazette.
It takes one year to have the trademark published in the Official Gazette so that any third party may oppose. Final publication takes place approximately 2 years after the application period.
If no objection is filed, the Registrar will then proceed to register the trademark and issue a registration certificate along with a copy of the trademark.
Any objections to the registration of the trademark can be submitted within three (3) months from the publication of the Registrar’s decision.
Then, if the Intellectual and Industrial Property Section is satisfied that the objection is admissible, it notifies the applicant of the objection, the documents and the evidence supporting it.
In case where the objection is based on relative reasons of objection, the Section notifies, both the applicant and the objector, that within two (2) months of the notice date, the applicant may amicably resolve the dispute. It is noted that the said deadline may be extended up to a maximum of six (6) months, upon the request of both parties.
In case an amicable settlement has not been achieved, within the said deadline then the applicant must file, in the prescribed manner, a counter-statement of the grounds on which he relies for his application, and, if he does not do so, he will be deemed to have abandoned his application .
If the applicant sends such a counter-statement, the Registrar has to furnish a copy to the persons giving notice of opposition, and after hearing the parties, if so required, and considering the evidence, must decide whether, and subject to what conditions or limitations, if any, registration is to be permitted .
The decision of the Registrar is subject to appeal to the Supreme Court in its revisional jurisdiction.
Renewing a Trademark.
The registration of a national trademark is valid for an initial period of ten (10) years from the application’s submission date, which can be renewed indefinitely for further consecutive periods of ten (10) years.
The beneficiary must renew the national trademark within six (6) months before the expiry of the previous protection period. It is noted that renewal, within six (6) months of the expiry of the previous protection period, is allowed by paying an additional renewal fee of fifty percent (50%) of the renewal fee.
In case of non-renewal within the aforementioned period, the Intellectual and Industrial Property Section proceeds to the strike-off of the national trademark.
Reinstatement of Trademark.
In case of termination of protection of a registered trademark due to its no timely renewal, the trademark beneficiary may request within twelve (12) months of the expiry date of its last ten-year protection period, the reinstatement and restoration of their rights, provided that even though the same has shown all due diligence under the circumstances, they could not comply with the renewal deadline, due to:
• force majeure;
• random unpredictable event; or
• other significant reason outside their responsibility.
Transfer of Rights.
Following the submission of a trademark’s application for registration or its registration, the applicant or the registered beneficiary may transfer their rights arising from the application or the registered trademark.
The transfer of rights may be whole or partial; hence, it may concern only certain products and services of the trademark, provided that no risk of misleading the public arises, particularly as to the nature, quality or geographic origin of the product or service.
Security interest, enforced execution or insolvency proceedings
A registered trademark may:
• constitute a pledge;
• constitute other security interest;
• constitute an object of enforced execution; or
• be subject to insolvency proceedings.
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