What is a trademark
A trademark is a unique mark by which a business carries out its activities and by which it identifies and differentiates its products and/or services from those of the competition. The aim of a trademark is to demonstrate the source of the company’s products and/or services and gradually consolidate it, imprinting in the consumer’s memory the existence of the company. In simple words, a trademark is an identification of the source of goods or services.
Legislation and relevant authority in Cyprus
Trademarks in Cyprus are governed by the Trademarks law Cap 268 and its amendments (Trademarks Law).
Cyprus is also a party to many international conventions such as:
- The Paris Convention for the Protection of Industrial Property
- The Agreement on Trade-Related Aspects of Intellectual Property Rights
- The Madrid Agreement for the International Registration of Marks and the Protocol
In Cyprus, the relevant authority is the Intellectual Property section of the Department of Registrar of Companies and Intellectual Property (Registrar).
What can function as a trademark
A trademark may consist of any signs, words, including the name of persons, pictures, letters, numbers, the shapes of the products, colors, or sounds.
To be eligible for registration a trademark must be distinctive. The trademark must be capable of distinguishing the goods or services of one business from the good or services of the others. Distinctiveness can be achieved by the use of made-up words or images or by an image that already exists but has nothing to do with the business that uses it. An example of this is Apple since phones and computers have nothing to do with fruits. This form of distinctiveness is known as “inherent distinctiveness”. The more distinctive a trademark is the more protection it receives.
A trademark, however, may be registered if, through long use, it acquires distinctiveness. Distinctive character acquired though use means that, although the trademark lacks inherent distinctiveness with regards to the goods and services claimed, at least a significant proportion of the relevant public has, owing to the use made of it on the market, come to see it as identifying the goods and services claimed as originating from the particular entity.
Absolute grounds for refusal of registration of trademark
The following cannot be registered as trademarks according to the Trademarks Law:
- The signs that cannot constitute a trademark in accordance with the provisions of the Trademarks Law
- The trademarks which are not distinctive
- The trademarks which denote the character or quality of the goods
- The trademarks which become generic
- The trademarks which exclusively consist of the shape which follows the very nature of the product
- The trademarks which if registered may conflict with public order or public morals
- The trademarks which may cause confusion to the public
- The trademarks which include religious symbols, flags state emblems and distinctive symbols
- The trademarks which are voidable according to Article 6bis of the Paris Convention for the Protection of Industrial Property
- The trademarks for which the application was made in bad faith by the applicant
Relative grounds for refusal of registration of trademark
According to the Trademarks Law, a trademark is not registered when:
- The trademark is identical to an earlier trademark and the goods or services for which the trademark is applied for are identical to those for which the earlier trademark is protected
- The trademark cannot be registered if, due to its identification or its similarity with an earlier trademark and the identification or similarity of the goods or services that the two trademarks cover exists a likelihood of confusion on the part of the public; Earlier trademarks for this purpose include trademarks that were registered earlier than the trademark in question and which belong to the following categories:
- Trademarks registered in the Republic of Cyprus
- Trademarks under international registration, which are valid also in the Republic of Cyprus
- European trademarks
- Applications for trademarks referred to 1-3 above, subject to their registration
- Trademarks which are “well-known marks” in the Republic of Cyprus in accordance with the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property
The trademark use may be prohibited because of an earlier right, other than the earlier rights mentioned above, mainly because of the right to the name, the right to the picture, a copyright, or an industrial property right.
Procedure of trademark registration in Cyprus
An application is submitted, together with the corresponding fee, at the Registrar. The application can be submitted either through the e-filing system or by hand or post.
The application includes information such as the applicant’s details, the details of the representative (lawyer), the goods and services under which the trademark seeks protection, these are classified in accordance with the Nice classification system, and details of any priority claims. The application must also be accompanied by a representation of the mark, except in the case of a word trademark.
Trademark applicants have the option to incorporate several classes into the same application, every class of products and services beyond the first class will have an additional fee. No Power of Attorney is needed. It is sufficient if lawyers submit an affirmation that they are a member of the Pancyprian Bar Association and legally represent their client.
Upon receipt of the application and corresponding fee, the Registrar proceeds with the examination of the application and examines the registrability of the mark on both absolute and relative grounds in accordance with the provisions of the Trademarks Law. If the application for registration is accepted, the Registrar will proceed with the publication of the decision in the Official Gazzette. Any objection to the registration of the mark by any interested party must be submitted within three months from the publication of the Registrar’s decision.
Provided that no objection to the trademark registration is submitted, within the period of three months, or if the objection is finally revoked or dismissed, the Registrar will proceed with the registration of the mark in the National Trademarks Register, its publication in the Official Gazette and the issuance of Registration Certificate.
A trademark which was not used for five years from registration may be taken off the register.
Under the Trademarks Law, there is not requirement for use before registration or to show use at the time of renewal.
Duration of protection and renewal
A trademark registration in Cyprus lasts for ten years period, counting from the date of the filing of the trademark application. Thereafter, the trademark is renewable for subsequent ten year periods.
In Cyprus a registered trademark is assignable and transmissible either in connection with the entire of the remainder goodwill of the business or without the goodwill of the business. A trademark assignment must be recorded before the Registrar by filing of the relevant form and payment of the relevant fee.
A trademark can be licensed for all or certain of its goods or services, to one or more licensees. In Cyprus, a copy of the trademark licence agreement, together with the certified Greek translation, must be submitted to the Registrar to be registered in the Register of Trademarks.
Trademark as a form of security
The Trademarks Law provides that a trademark can be granted as security or become the object of a pledge or of another right in rem, independently of the business, or may be the subject of insolvency proceedings.