Andria Papageorgiou Law Firm: Trademark Registration

By: Andria Papageorgiou Law Firm

A. Legal Framework

Trademarks and Service Marks in Cyprus are regulated by the Law Cap. 268 (as amended by the Laws 63/1962, 69/1971, 206/1990, and 176(I)/2000) which confers protection in combination with the provisions of the International Convention of Paris for the Protection of Industrial Property and Regulations of the World Intellectual Property Organization (WIPO). Trademarks in Cyprus are also governed by the Madrid Agreement (1891) and the Madrid Protocol (1989) concerning the international registration of trademarks, by the Agreement on Trade-Related Aspects of Intellectual Property Rights, EU directives, and regulations.

Protection in Cyprus is conferred not only to trademarks that belong to Cypriot owners but also to trademarks owned by foreigners. Accordingly, no discrimination is made between trademarks with their base in Cyprus and trademarks which have their base in another country.

Relevant for the registration and protection of trademarks in Cyprus is the Office of the Registrar of Companies and Official Receiver (the Registrar).

B. What is a Trademark:

A trademark is a distinctive element or a combination of elements, which is used to distinguish the products or services of an enterprise from the products or services of other enterprises, such as:

• words;
• persons' names;
• drawings;
• letters;
• numbers;
• illustrations;
• colors;
• shape of product;
• shape of its packaging; or
• sounds.

The trademark to be registrable must satisfy at least the following criteria:

• It must be distinctive;
• Not similar to any other trademarks, especially of the same class, already registered, or the examination of their application is pending;
• Not to be capable to deceive or confuse the general public.

Registration of a trademark constitutes a form of intellectual property.

C. Procedure before registration:

Before proceeding with the filing of the application for registration of the national trademark with the Intellectual and Industrial Property Section, you are advised to examine whether your proposed mark meets the following prerequisites:

• it constitutes a trademark and does not exclusively concern the general appearance of the product, an invention, or work protected by other types of intellectual property rights. For further information regarding other forms of intellectual property rights, please contact us at info@apapageorgiou.com.
• it is capable of distinguishing the products or services of an enterprise from those of other enterprises;
• it specifies the object of the protection provided to its beneficiary with clarity and accuracy;
• it does not conflict with the absolute reasons of rejection;
• it does not conflict with the relative reasons of rejection;
• it does not infringe third-party rights, by conflicting with an earlier registered trademark or an application for trademark registration. Our Law Firm can assist you with the relevant search.

It is noted that you may, before applying, apply to the Intellectual and Industrial Property Section for a preliminary opinion regarding the possibility of safeguarding your trademark, by submitting the relevant documents, accompanied by the applicable fees. For further information regarding the preliminary process, please contact us at info@apapageorgiou.com.

D. Application for the registration of a trademark in Cyprus:

Once you are satisfied that your mark meets all the prerequisites for protection and provided you have made an availability check among the registered trademarks and the applications for trademark registration, you can proceed with the submission of an application for its registration in the Republic of Cyprus.

The Registrar has the discretionary power to approve the trademark as such or to approve its registration under conditions or to reject the application.

Any negative decision taken by the Registrar will be announced to the applicant and the latter will have the opportunity to request in writing through his/her lawyer the reasoning behind the decision of the Registrar and to submit an objection to the Registrar if he/she is not satisfied with the decision.

If the Registrar accepts the trademark unconditionally or if the applicant accepts the trademark conditionally, the trademark will be published in the Official Gazette of the Republic of Cyprus for two months. During these two months, anyone with a solid reason may file for trademark opposition. If no opposition is registered, the Cypriot Registrar will issue a registration certificate with a copy of the trademark, and accordingly, the exclusive right of use is conferred to the owner of the trademark.

Trademarks in Cyprus have seven-year validity from the initial registration and may be renewed for 14 years after the first 7 years.

E. International registration of trademarks through Cyprus:

Trademark may be registered under the Madrid Agreement regarding the International Registration of Marks and the Madrid Protocol governing the Program for international trademark registration by the International Bureau of the World Intellectual Property Organization (WIPO). Cyprus became a party to the Madrid Agreement and Madrid Protocol on November 4, 2003, under which trademark owners have now the opportunity to have their trademarks protected simultaneously in more than 80 countries (Madrid Union) or by selecting a few according to their business needs, by simply filing one application in one language directly with their own national trademark office.

An applicant shall file its application for registration indicating the Contracting States where the protection is sought through the authorized office of Cyprus that transfers an application to the WIPO for consideration. The International Bureau of the WIPO will examine the application in terms of compliance with the above-mentioned international treaties and other sufficient criteria. After the registration of the mark in the International Register and publication of it in the official publication, the International Bureau of the WIPO transfers appropriate notifications to all the Contracting States where the protection is sought, and each such State shall, after appropriate examination, approve or decline registration in its territory. According to this procedure, the registered trademarks shall have the same legal status as the trademarks registered under the national procedure. Within this procedure, our Law Firm may be your authorized agent for communications with the competent authorities.

Regarding the submission of an application to the European Union Intellectual Property Office (EUIPO), the registration of the European Union Trademark (EUTM) is very popular among owners of trademarks. The distinctive feature is that the registered trademark is subject to protection in all countries of the EU without any exclusion (the EU trademark registration countries). This fact represents a sufficient advantage for business entities and entrepreneurs who plan to do business within the EU as a whole. The registration shall be carried out by the European Union Intellectual Property Office (EUIPO). For further information regarding the relevant submission(s), please contact us at info@apapageorgiou.com.

The Madrid system's subsequent management of the trademark is simplified since it makes it possible for any possible changes or renewal of the registration to be effected through a single and flexible process.

F. Benefits:

By registering your trademark, you obtain exclusive rights of its use and exploitation, including the placement of the mark on the products or their packaging, the supply of your products or services under the trademark, the use of your trademark as part of your business, or corporate name, its use on your professional forms and advertising materials.

Additionally, registering your mark provides an increased possibility of opposing its unauthorized use by third parties and of taking measures, including the prohibition of the use of the identical or similar marks in the following cases:

• transactions;
• placement on products or their packaging;
• offer of products or services;
• trade of goods or possession for trade;
• provision of services;
• import or export of products;
• business or corporate name, wholly or partially;
• professional printed material and advertisement;
• comparative advertisement in a way that contradicts Directive 2006/114EC;
• placement on packaging, labels, signs, security characteristics, or authenticity provisions;
• offer, trade, possession for trade, import or export of packaging, label, sign, security characteristics, or authenticity provisions.
  
  

Furthermore, the rights over a trademark may be sold, assigned, licensed, or otherwise commercially exploited for a monetary fee. A registered trademark or an application for trademark registration may be given as security or constitute a right in rem.

The benefits provided by a registered trademark are restricted geographically to the territory where it is registered (National/International/European).

G. AP Law Firm:

Andria Papageorgiou Law Firm can assist you with the registration of your Trademark, providing you the following services:

• Legal advice on Cyprus Laws about Intellectual Property;
• Trademark search and registration;
• Management and Administration services;
• International Registration Process of a trademark through EUIPO/WIPO;
• Objection and Removal assistance;
• Intellectual Property Litigation
• International Commercial Arbitration

Should you have any further questions, please do not hesitate to contact us at info@apapageorgiou.com

Disclaimer: The information contained in this article is provided for informational purposes only, and should not be construed as legal advice on any matter. Andria Papageorgiou Law Firm is not responsible for any actions (or lack thereof) taken as a result of relying on or in any way using information contained in this article and in no event shall be liable for any damages resulting from reliance on or use of this information.