National (Cyprus), International and Community Trademarks
National (Cyprus) Trade Marks
In Cyprus, Trademarks are governed by the Law Cap. 268 which provides protection in combination with the provisions of the International Convention of Paris for the Protection of Industrial Property, the Regulations of the World Intellectual Property Organization (WIPO) and Case law. Further, Cyprus entered the TRIPS Agreement on the 30th of July 1995, ratified the Trademark Law Treaty on the 17th April 1997 and became also a member of the Madrid Agreement and Protocol as of the 4th of November 2003. Cyprus became also member of Office for Harmonisation in the Internal Market (OHIM) after its entry to the European Union (EU) and since, it also follows European (EU) Directives and Regulations.
The relevant office for the registration and protection of TrademarkS in Cyprus is the office of the Registrar of Companies and Official Receiver (hereinafter called as “the Registrar”).
What is a Trademark?
A Trademark may be comprised of names, words, logos, symbols, numbers, designs, images, the shape of goods, colours, sounds and smells, or the mixture of a number of these elements that create a sign. This sign must be able to be represented graphically and must also satisfy at least the following criteria:
• It must be distinctive
• It must not be similar to any other already registered Trademark
• It must not confuse the general public
The trademark remains valid for 7 years from the date of the submission of the application and after its first renewal it shall be renewed every 14 years. Applications for renewal may be made at any time within three months of the expiry date.
The class in which registration will be made has to be determined. The Nice Classification is used, under which goods are categorized into 34 classes and services into 11 classes.
Advantages of Registering a Trademark
There are many advantages for registering a distinctive sign or mark, some of which are the following:
• The trademark owner receives exclusive ownership of the mark.
• Registration protects a company's name or logo, which is often a company's most valuable asset.
• Registration provides official notice to others that a trademark is already taken.
• Registration gives you exclusive rights, preventing others from using a trademark which can be confused with yours for goods and services of the same or similar type as yours is registered for.
• Offers legal protection to its proprietor as legal proceedings may be commenced in order to prevent its unauthorized use from third parties.
• Ability to grant a valid license to another party to use the trademark for profit.
Procedure before the application for the registration of Trademarks in Cyprus
Before submitting an application, it is desirable to commit a preliminary legal search at the relevant department of the Registrar where the records of Trademarks are kept. The search is carried out in order to elaborate whether there are any similar or identical marks, of the same or difference class, regarding the one for which the application will be submitted.
As a result of the recent decision of the European Court of Justice (ECJ), the Registrar has introduced a new policy on trademark classification, aiming to ensure accuracy and clarity on new national trademark applications in Cyprus. The new policy follows the context of the European convergence program Class heading.
According to the new guidelines, any new Cyprus trademark which is filed with the Cyprus Registrar of Trademarks cannot carry the description «all the goods/services of the class» and any such reference or similar reference will not be accepted.
The new policy on Cyprus intellectual property framework is in line with the ECJ precedent, whereby it was held that the submission of the trademark must ensure the basic operation of the trademark, which is subject to providing to the consumer or to the final user the possibility to distinguish, without a possible confusion, the goods or services of one business from the goods or services of other businesses and, as a consequence, that the goods or services must be identifiable.
The Registrar of Trademarks in Cyprus shall now require that the description must be clear and accurate, in order to provide to the competent authorities and businesses the ability to determine accurately the goods or services.
Procedure for the registration of Trademarks in Cyprus:
The applicant may appoint a lawyer who has a licence to practice law in Cyprus in order to file with the relevant office of the Registrar a full application containing all appropriate details and a form signed by the applicant authorizing the lawyer to file the application. The submitted application must be in Greek language including the name and the image of the Trademark, the appropriate class attached with a power of attorney signed by the applicant authorizing the lawyer to file the application.
Once the application has been submitted, the Registrar will examine it (on both absolute and relative grounds) in order to ascertain whether it contains all the required information, and once the required fees have been paid, the Registrar appoints a filing date and a number to the mark and then, conducts a search to establish the registrability of the mark. In this regard, the Registrar has the power to register the Trademark as such or to reject the application or even to accept its registration under conditions.
Further, the Registrar will inform the applicant about his decision regarding the registrability of Trademark. Then the applicant’s lawyer may request the reasoning behind the Registrar’s decision. Subsequently, if the applicant is not satisfied with the Registrar’s decision, he may submit an objection to the Registrar. If the Registrar withdraws his oppositions, then the Trademark is approved. Nonetheless, if the applicant refuses the Registrar's decision, then recourse is made to the Supreme Court.
Moreover, if the Trademark is approved by the Registrar unconditionally or if the applicant accepts the conditional decision of the Registrar, then the Trademark will be published in the Official Gazette of the Republic of Cyprus in order for the public to submit, if any, its opposition to the Registrar within 2 months from the publication date and further, the applicant will have the opportunity to respond to the oppositions.
At the end, if any obstacles described above regarding the registration of the Trademark have been overcome, then the Registrar issues a Certificate of Registration and hence, the owner of the Trademark has all the proprietary rights regarding the relevant Trademark.
International Registration of Trademarks through Cyprus
International Trademark registrations can be obtained through the filing of an International Trademark application from Cyprus. An application is filed with the Registrar of Cyprus with the filing of the form MM3 which will be forwarded directly to the World Intellectual Property Organization (WIPO). Once registered, International Trademarks are valid for ten years upon receipt of WIPO application in the office of origin.
WIPO is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 to encourage creative activity, to promote the protection of intellectual property throughout the world. Particularly, the scheme is governed by two treaties, the Madrid Agreement and the Madrid Protocol (the so called ‘Madrid System’). An international application may be filed by a national who has its domicile or a real and effective industrial and commercial establishment in one of the Country Parties to one or both of the above mentioned Treaties. Cyprus has ratified Madrid Agreement and Madrid Protocol since the 4th of November 2003 where trademarks owners are allowed to protect their trademarks simultaneously in more than 80 countries or by choosing a few according to their business desires.
Upon the submission of the application form to the WIPO, the latter will just examine it in relation to any informalities, but it will not examine the application on absolute or relative basis. WIPO will subsequently forward copies of such application to all the National Offices, for which protection is claimed, in order to examine the application on an absolute and relative basis. In this effect, the National Offices will elaborate the request for an extension of protection and apply its national laws to the examination of the application. If the application complies only with local registration requirements then, the contracting party will only provide protection of the mark in that specific country.
If a National Office, upon elaborating such application (on absolute and relative basis), considers that the Trademark is not able to be registered in that Country, then it notifies WIPO for such decision and subsequently, the latter will notify the applicant accordingly. In turn, the applicant may either decide to appoint a lawyer in that Country that refused to register the mark in order to defend the registration of such Trademark or he may decide to abandon the application in that Country.
The international registration of a Trademark will simplify the subsequent management of such Trademark due to the fact that the Madrid System makes it possible for any future changes or renewal of the registration to be effected through a single and flexible procedure. But the protection that the Madrid System confers to the Trademark is identical to the protection that would result from a national registration with the relevant office of a Contracting Country.
Registration of Community Trademarks
After the accession of Cyprus to the EU on the 1st day of May 2004, it became a member of the Office for Harmonisation in the Internal Market (OHIM). OHIM has its base in Alicante, Spain, and it is the office where applications for the registration of a Community Trademark (CTM) are filed. A CTM must be in use and must also be renewed every 10 years. The initial registration period is ten years from the date of filing the application.
Anyone can file an application for the registration of his Trademark as a CTM if he has his domicile or place of business or a real and effective industrial or commercial establishment in the EU or have authorised a legal person/entity that is qualified in a Member State who is able to act in that Member State as a representative in Trademark matters and who has his/her place of business in the EU. What is needed for a CTM to be registered is the filing of an application form (Mod.009) with the Office of OHIM with an authorization form. In turn, OHIM will examine the Trademark on absolute grounds and particularly, it will proceed to elaborate the correct classification of the goods and/ or services. Subsequently, the Office will publish the Trademark and then, it will proceed to its registration. The CTM application must be filed in any of the 27 languages of the EU. Further, a second language must be designated, which must be one of the five languages of OHIM, particularly English, French, German, Italian or Spanish.
Regarding the "absolute" grounds for dismissal of a Trademark application (for example the lack of distinctiveness of such a Trademark), there are also particular rules governing the registration of shape marks. In regards of the “relative” grounds for rejection, a CTM may be prohibited from being registered if there is a prior similar or identical registered CTM and/or national mark. Hence, a CTM must be registrable in both absolute and relative grounds in all EU Member States.
The registration of a CTM provides to its proprietor a right applicable in all EU countries based on a single procedural scheme. Therefore, the proprietor of a CTM is protected to use such Trademark in all European Countries by preventing also others from using the same Trademark in any of the EU Members. Furthermore, the registration of CTM eliminates the high filing costs typically associated with filing separate national applications in each Member State. An additional benefit is the automatic extension of already existing CTMs to another Member States. Further, it is not required to use or secure the registration or renewal of the Trademark in a single Member State, but it is sufficient to preserve the validity of the CTM registration throughout the EU and prohibiting from being cancelled due to the non-use over five years after registration. Additionally, a CTM can be registered quickly; if there are no oppositions regarding the registration of a CTM, then such registration will take place within 6-9 months from filing the application. In this effect, if the registration of a CTM is prohibited then, in some cases it can be transformed into national application.
Protection of Trademarks
The Trademark Law, in its role as a protection of the rights of the owners of the goodwill of the Trademarks and of the general public, contains a number of provisions which act as safety strategies. Proprietors whose interests are violated by the unregistered Trademarks or by wrong registrations of Trademarks are entitled, inter alia, to file before the District Courts the so called ‘infringement’ action or ‘passing off’ action (as defined by the Civil Wrongs Law) to rectify the situation.
If the proprietor could not be protected by a Trademark violation, then customers would be confused as to the origin of a certain good and as a result, could not expect on receiving reliable quality. Additionally, in general, there is something integrally unfair in permitting an infringer to acquire the benefit of the Trademark’s owner money and effort in building goodwill for his Trademark.
Trademark infringement is the use by another person of the same or similar Trademark that breaches the prior Trademark rights of another in the geographic area where such use takes place. The legal definition of infringement varies from one jurisdiction to another. In Cyprus the common standards for a Trademark infringement are: (a) there is a close similarity of a mark and its associated goods and/or services to a prior mark and its associated goods and/or services; or (b) the use of a mark that due to its similarity with the prior mark or the similarity of the goods and/or services of the prior mark with those of the latter mark creates a likelihood of confusion with a prior mark among the relevant customers; or (c) the use of a mark which is similar and/or identical with the prior mark or the use of goods and/or services which are dissimilar with those of the prion Trademark would damage the substantial reputation of the prior Trademark in Cyprus. Thus, where the registered mark has a substantial reputation, infringement may arise from the use of the same or a similar Trademark which, even if not causing confusion, harms or takes unfair advantage of the fame of the registered Trademark. This action may also regularly happen due to the use of the same or similar Trademark for goods or services which are not similar to those covered by the registration of the registered mark.
The owner of a registered Trademark which has been infringed may file an action before the district courts. The owner of the Registered Trademark bears the responsibility to prove that the similarity is deceptive upon the consumers. The relief usually undertaken is an injunction prohibiting the further use of the Trademark by the unauthorised person or an inquiry as to damages. If the infringement is in an advanced scale, the court may order the delivery up of the unauthorised Trademark for destruction or order the owner of the unauthorised Trademark to provide an account of the incomes acquired due to the the sale of goods or the provisions of services of which the authorised trademark was violated.
Moreover, if an individual has registered or even has not registered his Trademark he may still be entitled to file an action against someone who uses his mark on his or her goods or services without his permission, using the common law of passing off.
Passing off is a UK common law right, which has resulted of judge made law, on the common sense basis that it should be “an offence for one trader to misrepresent his goods or services as those of another, and so deceive customers into purchasing his goods (or services) when they thought they were purchasing those of another”.
Usually, for passing off action, three elements must be established:
- Firstly, it is necessary to show a goodwill or reputation attached to the goods or services which the proprietor supplies in the mind of the general public. For this reason, passing off cannot be used to protect a Trademark which is new, with little reputation, or where no trade in the geographic area for which the violation has taken place.
- Secondly, it is necessary to establish that a misrepresentation by the proprietor to the general public (whether intentional or not) has happened or is likely to take place. For this reason, such misrepresentation must lead or is likely to lead the public to believe that goods or services offered by the defendant are the goods or services of the proprietor.
- Thirdly, there must be a likelihood of damage resulting from the deception.
The establishment of these three features must be showed by evidence, so that a passing off action contains a high evidential burden (in other words you will have to work hard to win), but, however, it provides a possible remedy when, for instance, there has been an obvious unauthorised use towards a Trademark which has not been registered but has substantial use and a reputation. Furthermore, in case of a successful passing off action, the court may order for the goods to be detained and destroyed.
Difference between infringement action and passing off action
The main difference between infringement action and passing off action, as it was held in the case of Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical laboratories, AIR 1965 SC 980, is that the first action is a statutory remedy whereas the latter action is a common law remedy. Particularly, an infringement of a registered trademark may be established by showing that the infringing mark is identical or similar to the registered mark and no further evidence is needed.
In contrast with the infringement action, the passing off remedy cannot be established by simply proving similarity or identically of the marks. The passing off remedy requires that the use of the latter mark shall cause confusion on the public and as a result, the public believes that the latter mark is the same with the registered mark. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff’s goodwill, whereas in an infringement action this cause of injury is not obligatory.