International report - Examining the Cypriot trademark system 03 Feb 10
Michael Kyprianou & Co LLC - Cyprus
Trademarks in Cyprus are governed by:
- The Paris Convention for the Protection of Industrial Property.
- The World Intellectual Property Organisation Convention.
- The Madrid Protocol.
- The Agreement on Trade-Related Aspects of Intellectual Property Rights.
- EU directives and regulations.
- The Trademarks Law (Cap 268).
- Case law.
The owners of unregistered marks enjoy no right of action for infringement. No one can institute proceedings to prevent or recover damages for the infringement of an unregistered trademark. However, the owners of unregistered marks are free to bring a passing-off action against anyone that passes off their goods as those of the mark owner, and to seek remedies in respect thereof.
Unregistered marks may be assigned, together with registered marks, to the same person and in respect of the same goods.
There is no specific definition of or minimum use for establishing unregistered rights. However, "use" is defined in the Trademarks Law as use of the mark:
- On or in physical proximity to the goods.
- In an advertising circular or other advertisement issued to the public.
- For export purposes.
In order to enjoy the right to assign an unregistered mark, at the time of the assignment or transfer the unregistered mark must:
- Be used in the same business as the registered trademark which is also assigned and transmitted.
- Be assigned or transferred at the same time and to the same person as the registered trademark, and in respect of the same goods or services as the registered trademark.
Any natural person or legal entity is entitled to apply for and own a mark, provided that it uses or intends to use the mark.
Power of attorney
A representative requires Form TM1, a power of attorney, before filing, which allows the advocate to act as an agent in applying for a trademark. The power of attorney need not be notarised or legalised and it can be filed at a later stage.
Under Cyprus law, only advocates may be appointed as agents for the purpose of filing a trademark application.
Scope of protection
Protected: The Trademarks Law defines a "mark" as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof.
In order to be registrable, a trademark must contain or consist of at least one of the following essential particulars:
- The name of a company, individual or firm represented in a special or particular manner.
- The signature of the trademark applicant or a predecessor in its business.
- One or more invented words.
- One or more words that have no direct reference to the character or quality of the goods, and are not, according to ordinary signification, a geographical name or surname.
- Any other distinctive mark.
Colour may contribute to distinctiveness and is always relevant in determining resemblance and the likelihood of confusion and eventual infringement. If a trademark is registered without limitation of colour, it is considered to be registered for all colours. Colour in itself is registrable only if distinctiveness is proved; no such applications have yet been accepted for registration at the Cyprus Trademark Registry. The same applies for shapes and three-dimensional representations.
A trademark must be registered in respect of particular goods or services, or classes of goods or services. Any question as to the class within which any goods or services fall will be determined by the registrar of trademarks, whose decision may be challenged through a hearing proceeding.
Not protected: A trademark cannot be registered if:
- It is likely to deceive or cause confusion.
- It is contrary to public law or morality.
- It contains any scandalous design.
- It would otherwise not be entitled to protection in a court of justice.
Further, a trademark will not be registered if:
- It is identical to another’s earlier registered trademark and registration is sought for identical or similar goods or services.
- It so closely resembles another’s earlier registered trademark as to be likely to deceive or cause confusion.
Likewise, a trademark cannot be registered in respect of any services if it is identical or deceptively similar to another’s trademark which is registered - or for which registration is pending - in respect of identical services or goods which are closely related to such services.
In case of honest concurrent use or other special circumstances which, in the opinion of the court or the registrar, make it proper so to do, the court or registrar may permit the registration of trademarks that are identical to or closely resemble each other in respect of the same goods or services by more than one owner, subject to such conditions and limitations as the court or registrar may see fit to impose.
A trademark application may be filed only through a lawyer who practises in Cyprus.
The necessary documents are Form TM2 and a power of attorney which has been duly signed and stamped. Form TM2 is also available and accepted in English. The original form must be used; copies will not be accepted. The power of attorney may be filed at a later stage.
An application covering multiple classes of goods or services will be rejected. Each application for protection in a different class will be treated as a separate application. A general power of attorney will generally suffice for all filings, but if the trademark application is specific, separate powers of attorney should be submitted for each class.
Searches are available from the registrar of both registered marks and pending applications. Searches on trade names and company names are also available.
Once the application has been filed, the registrar will examine it for compliance with the legal requirements. The mark:
- Must be distinctive.
- Must not deceive.
- Must not resemble any mark that has already been registered or for which registration is pending.
The registrar can:
- Grant registration of the mark as applied for.
- Grant registration conditionally.
- Request amendments to the application.
- Refuse registration.
Where a trademark contains a word 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 Roman script is not used, a transliteration and translation must also be provided.
Upon receipt of a trademark application, the registrar will conduct a search of all registered and pending trademarks at the Trademarks Registry in order to determine whether there are any earlier marks for the same goods that are identical or confusingly similar to the applicant’s mark.
If the registrar raises objections to the registration, the applicant is notified accordingly and given a two-month period in which to apply for a hearing or submit a written response to these objections. If it fails to do so, the application is deemed to have been withdrawn.
The registrar’s decisions are subject to appeal before the Supreme Court.
If the application is accepted, either absolutely or conditionally, the registrar will publish the application as accepted in the Official Gazette. Anyone may object to registration of the mark within two months of the date of publication by giving notice to the registrar on Form TM5. Registration of a trademark may be opposed on the grounds that the mark lacks distinctiveness, is deceptive or is confusingly similar to an earlier registered trademark.
Within two months of receipt of the notice of opposition, the applicant must submit to the registrar a counter-statement on Form TM6, responding to the opposition and setting out grounds in support of its application. Upon receipt of the counter-statement, the opponent has two months to submit evidence in support of its opposition to the registrar; the applicant must also be provided with a copy of this evidence as submitted.
If the opponent files no evidence, the opposition will be considered abandoned. Otherwise, the applicant must file its own evidence with the registrar in the same manner and provide the opponent with a copy as submitted. The opponent has a further opportunity to respond to the applicant’s evidence within one month. The registrar will then set a date for the hearing and inform the parties accordingly.
Upon registration, the registrar will issue the applicant with a registration certificate which bears a copy of the trademark.
The trademark is registered as of the date of filing; for the purposes of the Trademark Law, this date is deemed to be the date of registration, unless the applicant claims a priority date in accordance with Article 4 of the 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.
Trademarks are initially registered for seven years and may be renewed for further 14-year periods thereafter. Renewal must be effected during the three months before the registration expires. If the applicant fails to pay the renewal fees, the registrar may, after giving the prescribed notice, remove the trademark from the Trademarks Register. However, the trademark may be restored by paying the renewal fee together with a restoration fee.
At the trademark owner’s request, the registrar may cancel the entry of a trademark in the Trademarks Register.
Any interested party may apply to court or to the registrar to have a registered trademark removed from the register in respect of any goods or services for which it is registered, on the following grounds:
- The trademark was registered without any good-faith intention on the part of the applicant that it be used in relation to the relevant goods or services, and there has been no good-faith use of the trademark in relation to those goods or services up to one month before the date of the application.
- There has been no good-faith use of the trademark for a continuous period of five years or more.
Unless the applicant for revocation has been allowed to register an identical or similar trademark in respect of the relevant goods or services, or the court or registrar is of the opinion that it might properly be permitted to do so, the court or registrar may refuse an application for revocation in relation to any goods or services if it is shown that there was good-faith use of the trademark in respect of the goods or services for which the mark is registered before the relevant date or during the relevant period.
If there is substantial use of the trademark after the initial five year-period has expired but before the application for revocation, the registration will not be cancelled, unless the use takes place in the three months before filing of the revocation and after the owner becomes aware that a revocation application might be filed.
If the owner of a registered trademark has not substantially used the mark for a period of five years, it may not use the mark as a basis for cancellation or opposition to the registration of a later trademark.
For the purposes of proving use, use of a trademark which varies from the mark as registered is acceptable as long as this variation does not substantially affect the character of the trademark. The use of a trademark solely for export purposes is also acceptable.
Anyone aggrieved by the omission of an entry from the register, or by an unjustified or erroneous entry in the register, may apply to the court, or alternatively to the registrar, which may issue such order for recordation, expungement or amendment of the entry as it sees fit. In doing so, the court or registrar may decide any question that may be necessary or expedient in connection with rectification of the register.
In case of fraudulent registration, assignment or transmission of a registered trademark, the registrar himself may apply to the court under these provisions.
Any court order on rectification of the register must specify that notice of the rectification be served in the prescribed manner on the registrar; upon receipt, the registrar will amend the register accordingly.
Upon application by an aggrieved party, the court or registrar may issue such order for recordation, expungement or amendment of an entry as it sees fit on the grounds of any contravention or non-observance of a condition entered on the register in relation to the mark.
Owners of registered trademarks can commence court actions for both infringement and passing off (as defined by the Civil Wrongs Law). In contrast, owners of unregistered trademarks may enforce their rights through actions for passing off only.
Under the Trademarks Law, the owner of a registered trademark has the exclusive right to use the mark in relation to the goods for which it is registered. This right is infringed where an unauthorised third party uses a mark that is identical to the registered mark - or that so closely resembles it as to be likely to deceive or cause confusion - in the course of trade in relation to any goods for which it is registered (or in relation to dissimilar goods if the registered trademark is famous), and in such manner as is likely to be regarded either:
- As use as a trademark.
- Where the mark is used on or in physical proximity to the goods, or in an advertising circular or other advertisement issued to the public, as importing a reference to someone who is the owner or authorised user of the mark, or to goods with which such person is connected in the course of trade.
An infringement action must be filed before the district courts. The owner of the registered trademark bears the burden of proving that the resemblance is deceptive.
The owner of an unregistered mark may take action only for passing off, and not for infringement. "Passing off" is defined as follows:
"Anyone who, by imitating the name, description, sign, label or otherwise, causes or attempts to cause any goods to be mistaken for the goods of another person, so as to be likely to lead an ordinary purchaser to believe that he is purchasing the goods of such other person, shall commit a civil wrong against such other person:… [However,] no-one will commit a civil wrong by reason only that he uses his own name in connection with the sale of any goods."
In a passing-off action, the owner of a registered or unregistered mark must prove goodwill and provide evidence showing an association between the trademark and the goods on which it is used, entitling it to use the mark to the exclusion of other manufacturers or traders. The association may be proved by various means, including advertising campaigns, the extent and duration of use, and the reactions of the purchasing public. The owner must also prove that:
- Its trademark has been imitated or copied.
- There is a likelihood of confusion on the part of the ordinary purchaser arising from such imitation.
- It has suffered damage due to the infringement.
The relief usually available to the owner of a trademark that has been violated is:
- An injunction restraining further use of the infringing mark.
- Damages, if these are proved in court.
If the action is finally decided in favour of the owner, the court may order the surrender for destruction of the infringing products.
It is also possible to obtain an interim order at the beginning of the case prohibiting use of the infringing mark until the matter has been finally decided. In order to obtain an interim order, the applicant must prove that:
- There is a serious matter for the court to try.
- The claim has strong prospects of success.
- It will be difficult or impossible for justice to be done at a later stage if the order is not issued.
It is possible to obtain an interim order ex parte if the applicant can prove the urgency of the matter and files the application as soon as it is notified of the infringement.
There is no time limit for pursuing an interim order; however, an interim order should be filed as soon as possible, since any delay in filing the interim order may harm the application and result in the court rejecting the application.
There is no distinction between the owner of prior rights against a registration which has been filed in good faith or in bad faith in respect of time limitation.
Any person may, within two months of the date of publication of an application for registration of a trademark in the Official Gazette, give notice to the registrar of opposition to the registration. The registrar sends a copy of the notice of opposition to the applicant, who is required to file, in the prescribed manner, a counted statement on the grounds on which it relies for its application.
A trademark owner may register its trademark with Customs using Form DPI 1. Registration informs Customs of these trademark rights so that it can intervene whenever counterfeit products are imported through the official ports of Cyprus. As soon as Customs spots suspected counterfeit goods, it will retain them and contact the trademark owner, providing it with a sample of the goods for examination. If the trademark owner confirms that the goods are counterfeit, they will be seized. The trademark owner must then apply through the courts for an order for the destruction of the counterfeit goods. The application is submitted together with copies of the trademark certificates and photographic material or any other material that will assist Customs in separating counterfeit goods from originals.
There is no substantial difference in the timeframes for the enforcement of registered and unregistered rights. However, actions taken on the basis of trademark infringement are easier to prove, since the evidentiary burden on the owner is lighter than in a passing-off action and the case can thus progress more swiftly.
Ownership changes and rights transfers
The proprietor of a registered trademark has the right to assign the rights of use of a trademark to an assignee. The assignee may file an application to the registrar, provided that he or she supplies the registrar with the assignment agreement, including all details and terms.
Copies of a deed of assignment and a licence agreement may be filed, but they must be certified as true copies of the original by a certifying officer. A power of attorney must be filed by both parties.
The same requirements apply to granting a licence for use of a registered trademark. In addition, the proprietor must supply the details of any consideration received for granting the licence.
It may be possible to seek protection for a device mark that has artistic merit under the copyright legislation, but as there is no registration procedure in Cyprus for copyright registration of artistic works, additional evidence is required in case of infringement of the device mark. An action based on infringement or passing off provides wider protection than an action under copyright law. Further, trademark rights may be renewed indefinitely, unlike copyright, which expires within a specified term.
The advertisement or sale of goods or services over the Internet is recognised as ‘use’ for the purposes of the Trademarks Law. The same trademark issues that arise in relation to traditional trading also arise in the online sphere. Therefore, infringement or passing-off actions may be brought in case of use over the Internet, either as a trademark or as a domain name.
This article first appeared in the World Trademark Review Yearbook 2009/2010, published by The IP Media Group (www.worldtrademarkreview.com).
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