By: Chambersfield Economides Kranos
In the era of innovation, digitization and tough competition, trademarks constitute a key form of intellectual property right for the global business market. In other words, trademarks, form one of the most fundamental cornerstones of your business; giving a unique and identifiable character to the services and/or products you provide.
At Chambersfield Economides Kranos we understand that trademarks play a crucial role in distinguishing your business from your competitors and safeguarding not only your business’ reputation, but, protecting your clients’ rights, as well, by enabling them to rely on well-established and well-known brands of services and/or products.
Undoubtedly, trademarks have now become more valuable, than ever, for the survival of a business, indicating a consistent level of quality for services and/or products. Registering a trademark grants to its proprietor exclusive rights over distinctive signs, including, inter alia, names, logos, colors, images, patterns, shapes, packaging of goods, or sounds.
Pursuant to the relevant legislative framework, the term “trademark”, refers to any distinctive sign/mark which is used, or, proposed to be used, in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user of that trademark.
International classification of goods and services also known as the Nice Classification (NCL) was established by the Nice Agreement (1957) and it constitutes a system of classifying goods and services for the purpose of registering trademarks. International classification of goods and services consists of 45 different classes, (classes 1-34 include goods and classes 35-45 embrace services).
Different levels of trademark protections exist. Our law firm operates at national, EU and international level regarding Trademark registrations and we can assist you at any level.
Registration of Trademarks at National (CY) Level
In order to register a trademark, in accordance with Cypriot legislative and/or regulatory framework, a relevant application has to be filed at the Intellectual and Industrial Property Section of the Registrar of Companies and Official Receiver. National trademark registrations will be protected only in those countries where they are registered.
Outline of Registration Procedure:
- An application is filed to the Department of Companies Registrar and Official Receiver by any person claiming to be the proprietor and/or a licence of a trademark. It shall be noted that the application shall be accompanied by all the relevant supporting documentation, as required by the Law.
- The Registrar may refuse the application, or, may accept it absolutely, or, partially, subject to such amendments, modifications, conditions or limitations, if any, it deems appropriate under the specific circumstances of each case.
- Upon filing of a trademark application, the Companies Registrar and Official Receiver, conducts a research in order to ensure that it is in conformity with the relevant legislative and/or regulatory criteria and prerequisites, before establishing the trademark’s registrability.
- In case of a successful application, the Department of Companies Registrar and Official Receiver shall, publish the application, in the prescribed manner and the publication shall set forth all conditions and limitations subject to which the application has been accepted.
- Any person may, within the prescribed time from the date of the publication of an application, give notice to the Registrar of opposition to the registration.
- Subsequently, the Department of Companies Registrar and Official Receiver, shall notify the applicant, accordingly, and, within the prescribed time-frame, the applicant shall send to the Registrar, a counter-statement of the grounds on which the applicant relies for his application, if not, the application may be deemed abandoned.
In case a counter-statement is filed by the applicant, the Registrar shall notify the opponent and after a thorough perusal and examination, the Registrar shall issue a decision as to whether, or, not, the trademark registration is to be permitted.
The decision of the Registrar shall be subject to appeal to the Court.
Nevertheless, in the case of a refusal, or, conditional acceptance, the Registrar shall, if requested by the applicant, provide a written report, with the grounds of his decision. The decision is subject to appeal to the Court.
- When an application for registration of a trademark has been accepted, the Registrar shall register the trademark, as the case may be, and the trademark, when registered, shall be enforceable from the date of the application for registration.
Duration of Registration:
The trademark registration is valid for a 7-years’ period. Upon the expiration of 7-years’ the trademark may be renewed for additional 14-years’ period, at a time.
Infringement:
It shall be noted that in case the rights of a proprietor, as they derive from the registration of a trademark are infringed, the proprietor retains the right to initiate legal proceedings against the infringer which our law firm can handle.
Registration of EU trademarksIf you need your trademark to be protected at EU level, then you shall, definitely, apply registration of your trademark through the European Union Intellectual Property Office (EUIPO). It is ideal in case you wish to expand your business operations in EU level, since a single EUTM registration results in a trademark being valid in all current and future EU Member States.
Outline of Registration Procedure:
Any natural person and/or legal entity, from any country in the world qualifies to file an application. In case you are based outside the EEA/EU, the appointment of a representative from inside the EU/EEA shall be required.
- Each application is examined, on a case by case basis.
- Third parties retain the right to file an opposition. Oppositions have to be filed in writing within a period of 3 months of the publication of the EU trade mark application in the EU Trade Marks Bulletin.
- Noted shall be that there is an all-or-nothing principle, even if a ground of refusal applies only for one Member State of the European Union. Therefore, an EU trademark application may be rejected, if a ground for refusal exists even in one of the Member States.
- Nevertheless, in such a case, the applicant does retain the right to apply for national registration of the trademark, in all the Member States of the European Union in which the ground for refusal does not apply.
- Registration is confirmed upon the issuance of the trademark registration certificate.
What kind of signs may be registered as EU trademarks?
According to the relevant regulatory and/or legislative framework, an EU trade mark may consist of any sign, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
- distinguishing the goods or services of one undertaking from those of other undertakings, and
being represented in a manner that enables the competent authorities and the public to determine the subject matter of protection with clarity and precision.
Duration of Registration:
The trademark registration is valid for a 10-years’ period. Upon the expiration of the 10-years’ period the trademark may be renewed for additional 10-years’ period, at a time.
- Registration of an International TrademarksAn international trademark may be registered either with the trademark office of each country in which you are seeking protection, or, through World Intellectual Property Organisation (WIPO). The International Trademark System, is known as the Madrid System which gives you the opportunity to file a single application to apply for protection in up to 122 countries.
In order to apply for an international trademark, you may be either a natural person, or, a legal entity, provided that you are domiciled, have an industrial or commercial establishment in, or be a citizen of one of the 122 countries covered by the Madrid System’s 106 members.
What kinds of signs may be registered as international trademarks?
A word or a combination of words, letters, and numerals can perfectly constitute a trademark. Furthermore, trademarks may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or color shades used as distinguishing features.
Outline of the Registration Procedure:
Our law firm will prepare and submit the application primarily through your national and/or regional IP office.
Hence, an international application shall be submitted, which is going to thoroughly and formally examined by the World Intellectual Property Organisation (WIPO) to ensure that it complies with the relevant legislative and/or regulatory prerequisites and/or criteria.
In case of approval of the international application, the World Intellectual Property Organisation (WIPO), shall publish the application in the WIPO Gazette of International Marks.
The application shall also be examined by the national and/or regional IP offices of the territories and/or states where the international trademark applies and the applicant shall be, accordingly, notified through WIPO. If an IP Office refuses to protect your mark, either totally or partially, this decision will not affect the decisions of other IP Offices.
Duration
An international trademark lasts for 10 years’ period. Upon expiration of the 10-years’ period, the trademark may be renewed for additional 10-years’ period, at a time.
At Chambersfield Economides Kranos law firm we are of the opinion that you should treat your trademark as one of the most vital and enduring assets of your business, providing value beyond your core business and paving the way for expansion. Don’t forget; it is through your brand name that your business will be remembered.
Our legal team of expert and experienced professionals can advise you and assist you with all trademark aspects, including, but not limited to, the registration of national trademarks, EU trademarks and international trademarks, as well as consultation and representation in relevant litigation proceedings. For any further information and/or clarifications you may require, please contact our offices.
