Cypriot Trade Mark Law
The use of trademarks is regulated by the Trade Marks Law (Chapter 268) as amended in 2006. Its origins may be traced in the respective British colonial trade mark law. Unless otherwise stated, all the statutory provisions cited, refer to the Trade Marks Law.
“Trade mark” is defined as “any sign which consists of elements capable of being graphically represented (particularly in words, including personal names, images, letters, numerals, the shape of a product or its package, or any combination of the above), and which is capable of distinguishing goods or services of one undertaking from those of other undertakings, provided the sign is being used or to be used for the purpose of such a distinction.” (Art. 2).
Consequently the main functions of a registered trademark are the following:
- Indication of the origin of the goods and/or services with a particular supplier;
- Indication of the quality of the products associated with their supplier;
- Measure of the ongoing value of the brand image of the particular products and/or services and/or the image of the supplier as a whole;
- Commercial exploitation of the trademark itself, as it constitutes a distinct piece of property.
The importance of registration
No trademark is valid and/or effective and/or enforceable unless it is entered into the public Register of Trade Marks. Therefore any proprietor should apply for registration of his/her trademark otherwise he/she will be unable to prevent a potential infringement of the trademark and/or claim damages for its unauthorized use (Art. 4).
Non-registration does not affect the legal rights or the remedies available to the proprietor in a potential action for fraudulent misrepresentation (Art. 4).
A) Trademark Registration procedure
Before applying for registration, the applicant should conduct his/her own research of the public Register of Trade Marks to ascertain whether there are any identical or similar trademarks that might affect the application for registration. A thorough preliminary research minimises the risk of procedural delays caused by potential objections as well as excessive costs caused by the aforementioned delays and in extreme occasions, litigation.
- A trademark may be registered for an initial period of seven years, after which it may be renewed indefinitely for periods of fourteen years (applications for renewal must be filed within three months of the expiry date of the on-going term). Both the registration and the renewal applications require the payment of a fee to the Registrar.
- The Law provides that only advocates licensed and practicing in Cyprus can deal with trademark matters in the Cypriot jurisdiction. An advocate may be appointed for the registration of trademarks, provided he/she is supplied with a Power of Attorney or he/she is performing under an agency agreement. If acting under a Power of Attorney, a duly signed and stamped power must be submitted to the Registrar along with the specified form for the application.
- All trademarks must be registered in relation to particular products/services or classes of products/services (Art.5). Application for registration in multiple classes will be rejected. The applicant must file separate applications in order to register his/her trademark in multiple classes. If the applications are too specific, the applicant should ensure that separate powers of attorney are submitted in relation for each application.
- An application is submitted to the Registrar using the specified TM2 Form, in which the applicant sets out all the relevant details:
- name and/or picture of the mark,
- required class of the Registry,
- description of the mark and the products associated with it,
- name, address and occupation of the applicant.
The application may be in Greek or in English. The applicant must file the original application forms. Any copies of them will not be accepted. Where a trademark contains words in a language other than English, the Registrar will usually request an exact translation and an indication of the language to which it belongs. If Greek/Latin script is not used, a transliteration must also be provided.
- On receipt of the application and fee, the Registrar conducts a search of all registered trademarks as well as those pending registration to identify any similarities between the trademarks themselves or the product/services associated with them. The Registrar will also ascertain whether the sign may be registered in accordance with the limitations set out in the Trade Mark Law (Ch. 268).
- If approved, the trademark is registered and is effective as of the date of registration, unless the applicant claims a priority date in accordance with Article 4 of the Paris Convention (see (E) below – ‘Paris Convention’). Such prior registration must be specified on the application form, and an original or certified copy of the certificate issued by the registrar of trademarks in the priority country must be provided.
Complications – Challenging the Registrar’s decision
If there are no complications and the application is accepted either absolutely or conditionally, the sign is registered and the relevant certificate is issued. However, if any issues arise, the Registrar will either contact the applicant and may request further details and clarifications or will set out his/her objections and the reasons for objecting the application. Frequent issues involve the class applied for, the exact meaning or pronunciation of a word or even the mark’s graphic representation.
The applicant may respond and set out his/her views on the issues raised by the Registrar. The Registrar may withdraw his/her objections and approve the application or impose conditions or propose a disclaimer, an amendment or a limitation before approving the application.
If the Registrar refuses the application the applicant may then challenge the decision before the Supreme Court by invoking Art. 146 of the Constitution (challenging executive and administrative actions). However an applicant should be warned that the Justices of the Supreme Court are reluctant to interfere with the Registrar’s discretionary powers.
The “absolute grounds”
It must be noted that under Art. 11, the Registrar may refuse an application for registration (or declare an existing trademark to be invalid) on the following grounds (also known as the “absolute grounds”):
- The sign does not satisfy the requirements of Art. 2;
- The trademark has no distinctive character;
- The trademark consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, origin, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
- The trademark consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
- The trademark consists exclusively of:
- The shape which results from the goods themselves; or
- The shape of goods which is necessary to achieve a technical result; or
- The shape which gives substantial value to the goods.
- The trademark is potentially deceptive as to the nature, quality or geographical origin of the products/services;
- The trademark contradicts the Paris Convention for the Protection of Industrial Property (Cyprus is a contracting state to the Convention);
- The trademark consists of a sign of great symbolic importance or a religious symbol;
- The application for the registration of a trademark was made in bad faith.
- The trademark is offensive and/or contradicts public policy and/or morality.
Accordingly, applicants are generally advised to avoid applying for registration of marks which are offensive, descriptive (in any of the manners set out in (c) above) or have become customary in everyday language (e.g. “Hoover” as opposed to vacuum cleaner) or lack distinctiveness.
Lack of distinctiveness may be overcome by publicly recognised use i.e. by building up goodwill in the mark over a period of years (usually a minimum of five years of continuous use of the trademark suffices). A mark is more likely to be distinctive if it is a made-up word. Marks which look distinctive but they sound like ordinary words when phonetically spelled, are not considered to be distinctive (e.g. ‘X-press’ as opposed to ‘express’).
The “relative grounds”
The Registrar may also refuse the application for registration of a trademark on the following grounds:
- The trademark is identical with an earlier trademark and is to be registered for goods or services identical to those for which the earlier trademark is protected; or
- By reason of the trademark’s identity or similarity to an earlier trademark or the identity or similarity of the products/services associated with the two trademarks, there is a likelihood of confusion of the public, which includes the likelihood of association with the earlier trademark;
- Where the trademark is identical or similar with an earlier trademark and the associated products/services are dissimilar, if the earlier trademark has a reputation in the Republic of Cyprus and the use of the later mark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trademark.
‘Use’ includes importing, exporting, putting the trademark on products or their package, trading, offering, keeping products for the purposes of trading, printing the trademark on professional printed material or advertising material (Art.6(3)). The advertisement or sale of goods or services over the Internet is recognized as ‘use’ for the purposes of the Trade Marks Law.
An applicant should be aware that the term “earlier trademark” includes both trademarks registered in Cyprus as well as Community Trade Marks (i.e. ‘EU’ trademarks) which were registered in a different EU Member State but are perfectly valid and enforceable in Cyprus by reason of its EU membership.
It should be also noted that an earlier trademark may be ignored and the application for the new trademark will be approved, if the owner of the earlier trademark consents to the registration of the new tradeamark. After the lapse of a five year period, the owner of the earlier trademark will be unable to challenge the validity or object to the use of the new trademark. Likewise the owner of the new trademark will not be able to object the use of the earlier trademark.
Certificate of registration
Upon approval of an application for registration, the Registrar advertises the trademark in the official Gazette of the Republic of Cyprus along with any restrictions and/or conditions imposed.
Anyone who wishes to oppose the registration must do so within two months of the date of publication by giving notice to the Registrar (Form TM5). Upon the filing of an opposition, the original applicant is notified and has to respond within two months from the date of receipt of the opposition, using Form TM6. The response must set out the grounds in support of the original application. Upon receipt of this response, the person opposing registration again has two months to provide the Registrar with evidence to support the opposition. The evidence provided by the two parties will be assessed in a hearing on a date fixed by the Registrar who will decide the fate of the application and will inform the parties accordingly.
The Registrar will then decide whether there are grounds to reject the application or will approve it, with or without imposing conditions, despite any reasons put forward by the person who objects to the registration. The Registrar will only issue a certificate of registration bearing its seal and signature after the lapse of the two-month period.
An identical procedure is used for any application for amendment of an existing trademark. The Registrar will examine the proposed amendments and will exercise his/her discretion to decide whether to approve or reject the application or impose conditions. The amended trademark is advertised in the Gazette of the Republic of Cyprus and the same procedure as outlined above is followed in relation to any potential objections.
Registered trademarks are regarded as valuable assets adding to the goodwill and therefore the overall value of the business. Art. 44 provides that being registered as the owner of a trademark is prima facie evidence of the validity of the registration and any future transfer or assignment of the particular trademark. This means that anyone who challenges the validity of the initial registration or of subsequent transfers/assignments bears the burden of proving that his/her allegations of invalidity are correct.
Any trademark registered in Cyprus may be assigned or transferred to another person. In addition it may be transferred or assigned in relation to the exploitation of all or some of the products/services associated with it.
An application to the Registrar is required for the assignment/licencing of a registered trademark. The application must include the assignment/licencing agreement itself, including all the relevant terms and details. The owner must declare any consideration received for granting the licence.
The owner of a trademark must ensure that the mark is well-protected and will ensure future applications for renewal. Dealing with the procedural issues within the time limits will not suffice. It is of utmost importance for any intellectual property owner to act promptly and take positive – and sometimes aggressive action – to preserve his/her legal rights, particularly if the business concerned is dealing in a highly competitive commercial environment. Accordingly the trademark owner should be aware of his/her essential legal rights when registering a mark.
By registering a trademark, its owner acquires absolute rights in its use. Therefore the owner may prevent another person from using the trademark without his/her consent in any of the circumstances described below:
- Uses a sign which is identical to the registered trademark and in relation to identical products/services;
- Uses a sign which may cause confusion to the public (incl. the danger of associating the sign with the registered trademark) because of its similarity with the registered trademark or the products/services associated with the registered trademark;
- Uses a sign which is identical or similar to a registered trademark which is reputable in the Republic of Cyprus and in relation to similar products/services and such use would damage the distinctive character or reputation of the registered trademark or lead to unjust enrichment.
It is highly recommended that an advocate is consulted before any action is taken to enforce legal rights.
Once registered, a trademark cannot be said to be fully protected as the Registrar may, following a petition, delete the trademark from the Register and invalidate it by employing the powers granted by Art. 28 and which are triggered in the following occasions:
- The trademark has not been used for a continuous period of five years;
- The trademark has become customary in the current language or in the bona fide and established practices of the trade;
- The trademark is deceptive as to the nature, quality or geographical origin of the associated products/services;
Therefore, the owner of the trademark is advised to do the following:
Firstly he/she must ensure continuous use of the trademark once it is registered.
Secondly he/she must avoid any actions which may deceive or mislead the public. It is also important not to allow or remain passive towards a potentially misleading or deceptive use of the trademark by a third party.
Thirdly he/she must ensure that the TRADEMARK does not become ‘customary’ or generic. A trademark becomes customary or generic if, as a result of action or inaction by the owner, it has become a common mark in the trade for a product or service for which it is registered and consequently, the trademark no longer distinguishes that particular product or service of one business from those of another business. This situation may lead to an application for revocation. Again, the ‘Hoover’/vacuum cleaner example is indicative of a trademark that has become customary. For this reason, legal practitioners often advise trademark owners to:
- Use the trademark as an adjective and not as a noun (e.g. “Buy our new ‘Hoover’ vacuum cleaner” as opposed to “Buy our new ‘Hoover’ ”);
- Distinguish it from the surrounding writing (e.g. by utilising different typing techniques such as ‘bold’, putting it in capitals etc);
- Acknowledge it as a registered trademark by using the ® symbol (it is not permitted to used this symbol if the mark has not been validly registered).
D) Unregistered marks
The owners of marks that have not been registered have no right to sue for trademark infringement. However they may bring a passing-off action. A passing-off action essentially prevents someone from selling goods or services resulting in a manner that results in unfair use of the claimant’s reputation or in damage to the claimant’s business reputation. Even though it has not been registered, a mark may obtain the status of a well-known and reputable sign through its extensive use and by considerably adding to the value of a business’s goodwill.
A passing-off action is often used as an additional remedy to claims for infringement of registered trademarks. Sometimes the infringement claim will fail while the passing-off action will succeed because, being a common law system, it is more flexible than the registered trademark system.
E) International provisions
Other than the national and EU primary and secondary legislation, trademarks in Cyprus are also regulated by:
- The Paris Convention for the Protection of Industrial Property;
- The World Intellectual Property Organization Convention;
- The Madrid Protocol;
- The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS);
Community Trade Mark (CTM)
By reason of Cyprus’s membership of the EU, Community Trade Marks are perfectly valid in the Cypriot jurisdiction. A CTM is an EU-wide trademark granting protection in all the Member States of the EU. A single application is made to the Office for the Harmonisation of the Internal Market in Alicante (Spain). However registration can be defeated if it is discovered that a similar trademark has already been registered in at least one of the other Member States. If application is unsuccessful, the applicant may apply to individual Member States using their respective domestic procedures and acquire multiple national registrations or use other international media.
In a CTM application the following information must be filed:
- Full name and address of the applicant;
- Country and, if appropriate, the State of incorporation of the applicant (needed in the case of federal States e.g. USA, Canada, Australia);
- Full details of the trademark;
- A good representation of the logo/design;
- An indication of the goods and/or services sold or to be sold under the trademark;
Cyprus became member of the Madrid Agreement and Protocol in 2003. Anyone who registers a trademark in Cyprus can apply for its registration in all the other contracting States. The system is run by the World Intellectual Property Organisation (WIPO). The EU itself has become a member of the agreement and therefore a Community Trade Mark may also form the basis of an application.
Cyprus is also a contracting State to the Paris Convention for the Protection of Industrial Property. The Convention provides the right of priority to those applying for the registration of a trademark in any of the contracting States. Essentially, this means that on the basis of a regular first application, the applicant may, within six months, apply for protection in any of the other contracting States. These later applications will then be regarded as if they had been filed on the same date as the original application. Therefore, the subsequent applications will have priority over applications filed by third parties during the six-month period in relation to the same mark.
The Convention does not provide for a single application neither does it regulate the conditions for the filing and registration of the marks. Each application is therefore determined in each contracting State on the basis of the domestic law of each jurisdiction. Revocation of registration in one contracting State does not affect the validity of registration in other contracting States.
The registered trademark system may help an entrepreneur expand his/her business and acquire a valuable intangible asset which may be exploited as any other personal asset. Cyprus’s membership to the EU and the main international intellectual property organisations and agreements, in conjunction with its flexible and business-friendly commercial environment and legal framework, ensure the efficiency of the registration procedure and the effectiveness of the protection afforded, without hindering competition in the market. However, the very nature of intellectual property law and in particular the field of trademark law, require the owner to take positive actions and protective measures and regularly review and respond to the changing circumstances that may affect his/her legal rights. For this reason we strongly recommend that a licenced advocate who is currently practicing in Cyprus is always consulted before any steps are taken in relation to intellectual property rights.
In Marios Hartsiotis & Co LLC we provide valuable legal advice in relation to the registration, protection, use and exploitation of trademarks as well as other intellectual property rights such as patents, copyright and designs.
Trainee, Litigation Department
Marios Hartsiotis & Co LLC