In view of the upcoming changes to the current Trademarks Law in Cyprus, the law itself as well as the registration of trademarks have attracted great interest since their evolution is anticipated to assume great importance in the forthcoming years. A short review of this topic is presented below.
Under Cyprus laws, a trademark is defined as a sign that can be reproduced in various ways. This can be done graphically, by words that may include the names of persons, by pictures, letters, numbers, shapes of any products or any combination as long as they are distinctive as trademarks or service marks. Generally, by registering a trademark the owner is granted an exclusive right of use, with specific reference to the class of goods or services for which it is registered.
A trademark is essentially a mark that allows a company to render its services or products distinct from those of other businesses. It also amounts to a highly valuable proprietary asset of the registered business holder. Article 24(1) of the domestic Trademarks Law provides that a trademark can be transferred or assigned either along with the goodwill of the business or remainder of the goodwill of the business or otherwise.
A trademark is solely protected within the jurisdiction in which it was registered, so in the case of registration outside Cyprus, an additional procedure needs to be adopted. Trademarks cannot be registered if they are devoid of a distinctive or unique character or are the same or similar to previously registered trademarks. The rationale behind this proscription is that such use may bestow an advantage which usurps a pre-existing trademark. A trademark that violates public policy and is also contrary to accepted principles of morality is deemed as ‘scandalous’ by the law and it, too, can not be registered in Cyprus.
The current legal framework
The domestic legislation governing trademarks is the Trademark Law Cap 268, as amended from time to time. The domestic law shall soon be replaced with the new law incorporating the EU Directive 2015/2436.
On the international perspective, Cyprus is also a party to, inter alia, the Paris Convention for the Protection of Industrial Property, the Convention Establishing the World Intellectual Property Organization (WIPO), the WIPO Treaty, the Madrid Agreement for the international registration of marks and its Protocol, the Trademark Law Treaty and the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Outline of trademark registration procedure in Cyprus
The designated office for the registration and protection of Trademarks in Cyprus is the Office of the Registrar of Companies and Official Receiver (“the Registrar”). The first step before registration of a national trademark in Cyprus is the undertaking of a search at the Registry of Trademarks which is regulated by the Registrar of Companies. Such an investigation is not mandatory but is highly desirable, in order to check and verify that no similar trademarks had been already registered and it requires approximately three weeks. With the conclusion of the search, an application form for the registration of a trademark along with a Power of Attorney, are filed. Through the said Power of Attorney, the applicant authorises a duly licensed practicing lawyer in Cyprus to proceed with the filing of the application for registration of the trademark on his/her behalf.
Following the filing of the application and the required fee, the Registrar will appraise the application and examine the proposed trademark as to the extent of its distinctiveness and absence of creation of a sense of confusion or deception to the public. The Registrar will proceed to publish it in the Official Gazette of the Republic for a period of two months, so that any party opposing the registration may have the chance to file an opposition within this period. If no opposition is filed, the Registrar will then proceed to register the trademark and issue a registration certificate along with a copy of the trademark.
A landmark case concerning registration, was recourse no. 204/1991 Fournier Innovation et Synergie v The Registrar of Trademarks. It was decided that the word ‘ARPHA’ resembled the Greek alphabet letter ‘Alpha’ which, when used in the context of products implied high quality. The Cyprus Court, however, resolved that if the applicant’s name were to be added to the proposed word ‘Alpha’( i.e. ‘One Alpha Leo’), then this would confer the necessary distinctive character to the trademark. Hence, this decision paved the way for the potential addition of a name which in turn would render many applications to become acceptable to the Registrar.
In a case where an opposition is indeed filed within the aforementioned two months, the parties shall submit their observations and evidence. The Registrar, after hearing both sides,shall then determine whether the trademark is registrable or otherwise will refuse the registration. The Registrar may also elect to approve the registration under certain conditions or may request the application to be amended. If the Registrar refuses to allow the registration of the trademark, the applicant may file a recourse in the Administrative Court.
On the basis of article 22(1) of the current Trademark Law CAP 268, trademarks in Cyprus have a validity period of seven years commencing after their initial registration. Once these lapse trademarks can then be renewed every fourteen years.
Trademarks can be registered beyond the scope of Cyprus. In order for a trademark to be legally valid and protected within the entirety of the E.U it can be registered as an E.U Trademark on the basis of Regulation 2017/1001, EU Directive 2015/2436 and others. The E.U Trademark has a unified character. It retains its own legal standing while at the same time it co-exists with the domestically registered Trademark. Since the accession of the European Union to the Madrid Protocol, both the European Union Trademark (EUTM) system and the so-called Madrid system have become interlinked. It is possible either to file an international application based on an EU Trademark, or to designate the EU in an international application. Furthermore, if a trademark is intended to be legally valid and protected internationally, it should be registered as an International Mark on the basis of the Madrid Protocol.
Outline of the changes introduced with the new domestic Trademark law
The new trademarks law shall be completely aligned with the EU Directive 2015/2436. The main targets of the new law are to simplify and expedite the procedures for trademark registration opposition and invalidation in order to conform with the contemporary commercial trends. Some of the changes that will be introduced are stated below:
a. Renewal and validity:
As mentioned above, after a trademark is registered it remains valid for seven years. After its first renewal it may be renewed every fourteen years. After the replacement of the current legislation and in accordance with the new law, future registration of trademarks will be valid for ten years with their renewal to be made every 10 years.
The new law will extend the period during which an opposing party may contest the registration of a trademark. As noted above, the opposition period is currently set to two months, during which the trademark is published in the Official Gazette. The new law will extend this period to three months. The new law also provides for the initiation of a hearing to be reserved for exceptional situations and focuses on the introduction of amicable settlement of trademark disputes as well as the upholding of the rationale that trademarks will be primarily used as a defense mechanism.
The Power of Attorney at the registration stage will be replaced by a written statement signed by the applicant’s lawyer, thus obviating the need for a distinct Power of Attorney, and a unified levy fee will be introduced for the entirety of the registration procedure of the trademark. A graphic representation of the trademark will no longer be a requirement for its registration. Furthermore, the procedure for the transfer of the trademark will also be simplified.
c. New system of classification:
A system of multi-tiered trademark classification will be introduced. The goods and services in respect of which a trade mark registration is applied for shall be classified in conformity with the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Mark. The goods and services for which protection is sought shall be identified by the applicant with sufficient clarity and precision in order to enable the competent authorities and economic operators, to determine the extent of the protection sought. Any modification of the classification of products/services can potentially be made at the renewal stage with the new Law.
d. Enhanced protection:
Trademarks related to geographical indications/names of origin will be protected more vigorously by the new legislation as well trademarks relating to natural plant varieties and traditional products of specific character.
A more meticulous regulation of collective marks and certification marks will also be undertaken in compliance with the new law.
What these changes practically mean for trademark law and procedures in Cyprus, and what further legal developments may follow as a consequence, remains to be seen.