By: A. Karitzis & Associates LLC
Admittedly the terms “tradename” and “trademark” are usually confused because of their similarities (to some extend), which however -in fact- distinct the said terms between them.
In so far as tradenames are concerned, these can be registered at a national level (with the Department of Registrar of Companies and Intellectual Property (“DRCIP”) of the Republic of Cyprus) and such a tradename registration afford the owner of the respective trademark (whether physical or legal person) the right and the ability to carry on its business activity using the said tradename. It is important to note that national tradenames may only be comprised of words (ie word marks) and are not considered as entities having separate legal personality. Last but not least, it is essential to note that the registration of a national tradename does not afford any intellectual property protection over the said tradename.
On the other side, a trademark may comprises, among others, of words, figures, shapes, positions, patterns, colours, sounds, motion, multimedia, holograms or combination of such elements, while, depending on the geographical extent of the protection to be afforded and the particular needs of the owner thereof, a trademark may be registered at a national level (eg in the Republic of Cyprus), at a community (EU) level or at an international level.
A national trademark is only protected at a national level (ie only within the Republic of Cyprus) while not maintained and protected internationally; thus, a Cyprus trademark will only give its owner national protection. In the course and for the purposes of the registration of a national trademark, and in any event before applying for the registration thereof in Cyprus, searches must be contacted in order to find out the eligibility of the trademark to be registered and, in particular, whether (i) the trademark is capable of registration and (ii) there is a similar or identical trademark, already registered. In terms of the procedure for the registration of a national trademark, following completion of the search for its eligibility for registration, an application is submitted to the DRCIP to this end. Upon examination of the application, which may take approximately a couple of months, the DRCIP shall proceed with the publication of the notice for the registration of the trademark in the Official Gazette of the Republic of Cyprus. The Registrar (heading the DRCIP) will not grant its permission for the registration of the trademark, unless a period of two (2) months from the publication date has been lapsed. In the absence of any objections against the registration of the trademark, the Registrar registers the trademark and issues the respective certificate. The registration of the trademark remains valid for a period of seven (7) years from the date of registration and must be renewed (at a cost) at its expiration.
Where broader protection (within European Union is required), a trademark may be registered at a community level. More specifically, a community trademark offers its owner enhanced protection since a community trademark is well protected in all countries of the European Union on the basis of a single registration with the competent authority. At first stage, before proceeding with the submission of an application for the registration of a community trademark, searches must be contacted in order to find out whether (i) the trademark is capable of registration and (ii) there is a similar or identical trademark, already registered. Then, an application for the registration of a community trademark is filed. Upon examination of the aforesaid application and provided that no errors or defaults will be detected, the desired tradename will be published in the Community Trademarks Bulletin (translated in all the official languages of the European Union) giving everyone the right to object to the application. The period granted for oppositions is three (3) months from the publication date. In the absence of any objections against the registration of the trademark, the approval for the registration of the community trademark is granted. Kindly note that the registration of the trademark is valid for a period of ten (10) years from the date of its registration whereas once it is registered, the trademark is established as a trading name and protection is given for non-EU jurisdictions as well, provided that the trademark will be a well-known and recognized mark (subject to the laws and regulations of such other non-EU jurisdictions). In this respect, it is worth noting that even if the registration of a community trademark is approved, if the trademark is not used within the European Union within five (5) years from its registration, its cancellation may be requested. In addition, it should be noted that such a trademark will also be vulnerable to attack in the event that the trademark is not used for all the goods and/or services, as the case may be, which have been specifically declared on the application form.
Moreover, where enhanced protection is sought outside the European Union, a trademark may be registered at an international level, in which case, protection is granted in the countries where the trademark is specifically registered. In this respect, it is worth noting that there two options in securing the registration of an international trademark. The first one is, after the conduct of all appropriate searches for verifying that (i) the trademark is capable of registration and (ii) there is a similar or identical trademark, already registered, to file an application directly to the competent international organization. The second option is to follow the procedure for the registration of a national trademark and then, upon registration of the trademark at a national level, proceed through the DRCIP with the filing of an application for the registration of the same trademark with each of the third countries where protection is needed (district registration in each country). In any event, the terms and the duration of validity of the protection to be afforded over the trademark depend on the laws and regulations applicable in each third country where the trademark is to be registered.
In light of the above, when someone is considering on whether to proceed with the registration of a tradename or a trademark, the first point to decide on is the nature of the mark and whether intellectual property protection is also sought. In the event that the said test results in the registration of a tradename, then the situation is relatively simple. If, however, it turns that the registration of a trademark would better suit the needs, then the scope and geographical extent of protection for such a trademark must be analysed.
