Nature

The unique and distinct character of goods or services is identified. It is used to distinguish one trader’s goods or services from those of another.

Cyprus Memberships

• Paris Convention for the Protection of Industrial Property
• Trademark Law Treaty, The WIPO Convention
• Madrid Agreement Concerning the International Registration of Marks
• The Madrid Protocol
• The Geneva Trade Marks Law Treaty 1994

World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

National Law And Guidelines

• The Trade Mark Law CAP 268 which governs trademarks and their registration in Cyprus
• The Amending Laws 63/1962, 69/1971, 206/1990 and 176/2000.

Law 176/2000 has brought Cypriot trademark legislation in line with European trademark legislation.

Why Protect Trademarks

• It ensures the exclusive right to its owner to use it.
• Offers legal protection. The owners need only to show its unauthorised use, without having to prove actual damage to their business.
• Blocking of third parties from registering a trade mark for identical or similar goods and services.
• Right of the owners to seize and remove infringing goods from the market.
• Ability to authorise the use to third parties in return of financial profit.
• It is an asset with valuable goodwill attached to it. Trademarks may be valued and included in the balance sheets of the business.
• Avoidance of confusion in the market as to who devises and or promotes a particular product or service

What May Be Registered As A Trademark In Cyprus

Any sign capable of graphical representation especially:

• comprising words including names of people
• designs
• letters
• numbers
• the shape of the product or its packaging
• any combination thereof

That by its nature is capable of distinguishing the products or the services of one undertaking from those of another as long as the said trade mark is used or is intended to be used for the purposes of such distinction.

• Any Certification mark which is certified as to quality, country of origin, method of manufacture and ingredients. Certification marks are normally attached to famous national products.
• Any Collective mark which distinguishes the products or services of members of one group of undertakings from those of another. Examples of such groups of undertakings would be associations representing accountants, engineers or architects.

Application Of Registration

An Application is submitted:

• By any natural person or a corporation.
• Only via a lawyer member of the Cyprus Bar Association, practising law in Cyprus.

Along with:

•  An Authorisation of Agent form signed by the client authorising the lawyer to act on his behalf. Where the applicant is a legal entity the Authorisation of Agent must also be sealed with the Company’s seal.
• Forms ES1, ES 2, ES3.
• Full details of the applicant’s name, address, nationality (and nature of business in case the applicant is a corporation)
• A clear reproduction and or description of the goods (or services) to be covered by the application including colors, forms and bi- or tri- dimensional figures and the required class to be registered
• Certified document by the relevant authority to confirm priority right if available, under the Paris Convention with certified translation in Greek.

The Lawyer may carry out a preliminary search to identify clear grounds for a successful application.

The international classification system is followed subdividing goods and services into classes 1-34 and 35-45 respectively.

Applications concerning different classes are submitted individually.


The Registrar In Practise

• Appoints a filing date
• Issues a registration number to the mark
• Conducts a search in order to establish its registrability.

The Registrar may then accept the proposed Trademark either:

• with conditions by imposing modifications or
• without conditions

If proposed to be accepted with conditions by imposing modifications then the applicant may request in writing the reasoning behind the Registrar’s intention to impose conditions and have a right to be heard before the Registrar via his Lawyer against such imposition by setting out the respective reasons.

If the Registrar accepts the trademark without conditions and or the applicant accepts the trademark with conditions then:

• The trademark is published to the Official Gazette of the Cyprus Republic further to the payment of the relevant publication fee.

If there is an objection by third parties within the prescribed time frame to the trademark then the applicant has the right to reply to such third party objections. Else, if there is no such objection the trademark is registered and the Certificate of Registration is due for issuance reject it due to:

• Absolute grounds as provided by the Law such as lack of distinctive character and or use of a geographical name and or reflecting a national emblem.

And/or according to the discretionary powers of the Registrar and/or similarity as to an “earlier” registered trademark either on International level (Madrid Union), Community level or National level.

Upon rejection by the Registrar the applicant via his lawyer, may submit evidence in the form of an Affidavit to prove that the mark is in fact distinctive or to prove its fame. If, after this step, the Registrar maintains the rejection of the mark, then the applicant via his lawyer may request for judicial review of the Registrar’s decision under article 146 of the Constitution at the Supreme Court of Cyprus in its revisional jurisdiction.

Duration

A successful trademark is protected as from the date of its filing and not the date of its eventual registration.

A trademark is initially registered for 7 years. Thereafter it can be renewed every 14 years in order to remain valid. A reminder is usually sent to the owner of the trademark by the Cyprus Trade Mark Registrar that the renewal fees in respect of his trade mark(s) are due. Failure to renew a trademark will result in its removal from the Cyprus trademark register.

Infringement

1. Registered trademarks

by third parties can be restrained. Failure or refusal to stop infringement is dealt with by bringing an action for an injunction and or damages. The Court may grant other relief according to its discretion such as request submission of accounts evidencing any profits made by the infringing party by reason of the infringement. The registered owner need only show that his trademark is used without authority without having to prove actual damage to his business.

2. Unregistered trademarks

are not protected under the Law, though it may be relieved by bringing an action to the Court for the tort of passing off such as in situations of misleading and or false presentation of the products, in which case a fine may be imposed and or imprisonment.

 Assignment

1. Registered trademark

Registered trademark is assignable under the law

• with a transfer of the whole or part or none of the goodwill of the business.
• in respect of whole or part of the goods or services

A recorded assignment is effective against third parties.

2. Unregistered trademark

Unregistered trademark is assignable under the law with a transfer of the whole or part or none of the goodwill of the business provided that at the time of its assignment the unregistered mark is used in the same business as a registered trademark and is assigned at the same time and to the same person as the registered trademark.

Assignments of pending marks will however only be recorded by the Registrar’s Office once they have matured to registration.

Licensing

Licensing is permitted in exactly the same manner as in the UK. It should be recorded in order to be effective against third parties