Newsletter No.6 – September 2020

Trademarks Law and new amendments

On June 12, 2020, an amending law was published in the official Gazette of the Republic of Cyprus, pursuant to which the vast majority of the provisions of the Trademarks Law, Cap. 268, (the “Trademarks Law”) has been replaced. The reason for such major amendment to the Trademarks Law, is the harmonisation of the trademarks legal framework in Cyprus with EU Directive 2015/24316 and EU Regulation 2017/1001 and generally the modernisation of the trademarks framework in Cyprus.

1.        Protection of trademarks

Any physical or legal person may acquire proprietary rights on a mark upon its registration with The Register of Trademarks kept by the Registrar of Companies and Official Receiver (“Office”). A trademark may be comprised by a sign, words (including names), or by a design, letters, numbers, the shape of the product or its packaging or by sounds. A trademark may only be accepted for registration if it is distinctive as to the goods or services that a business provides, as it relates to the goods or services of other businesses.

The Trademarks Law further provides for absolute reasons for which a trademark may not be registered or, if registered may be cancelled. Some of the reasons are the following:

-          If a trademark is not of distinctive character;

-          If a trademark is comprised of marks or indications which may be used for a transaction indicating the type, quality, destination, value, geographical origin or the time of its production or other product or service characteristics;

-          If a trademark contradicts public order or morality;

-          If a trademark is misleading for the public;

-          If a trademark contains a country’s flag or a mark of significant importance and public interest e.g. religious symbols.

Furthermore, the Trademarks Law provides for several relative reasons for rejection:

-          If a trademark is identified with a previously registered trademark and the products or services are the same as the ones for which the previously registered trademark is being protected.

-          If a trademark is the same or similar with a previously registered trademark and the similarity of products or services present a risk of confusion for the public.

“Previously registered trademarks” are the trademarks for which an application for registration has been submitted prior to the registration application of the trademark in question and the following priority applies:

(i)      EU trademarks

(ii)    Trademarks registered in the Republic of Cyprus

(iii)  International trademarks with effect in the Republic of Cyprus

2.        Nature of rights to a trademark

Once registered a beneficiary has an absolute right on the trademark and no person may use such trademark in transactions without the beneficiary’s consent. Specifically, a beneficiary may prohibit the use of a trademark on a packaging, during trade or sale, import / export of product and in other instances as provided in the Trademarks Law.

3.        Initiation of the Registration Process

An application for the registration of a trademark may be made directly to the Office or via the designated online portal via his/her attorney in fact or lawyer. The following information is required to submit an application for the registration of a trademark:

a)      A representation of the mark. In case a trademark to be protected is comprised of a figurative mark, there are specific requirement which apply for the representation of such mark.

b)      Details of applicant: name, professional address, email, or name of company and registered office.

c)      List of products or services for which registration shall be applied for, in accordance with the Nice classification system.

A single application for registration of a trademark may, according to the Trademarks Law, include more than one classes of the products or services of the Nice classification.

4.        Completion of registration

In case no reason for rejection, as described above, exists the application is thereby accepted and published in the Official Court of the Republic of Cyprus.

After its publication, any third person has a right to object to the registration of the trademark within 3 months as from the date of its publication in the Official Gazette.

5.             Duration of protection and renewal

The trademark registration is valid for 10 years and the period starts from the date of submission of the registration application. The registration of a trademark may be extended for consecutive 10-year periods, upon the timely payment of the designated renewal fee. The renewal application may be submitted during the last 6 months of protection of the trademark.

For any further information on trademarks, please do not hesitate to contact us at info@tzionilaw.com.cy.

The above material has been prepared with the intention of being a general guide only, and its application to specific situations will depend on the particular circumstances involved. Accordingly, we recommend that readers seek appropriate professional advice regarding any particular problems that they encounter. This information should not be relied upon as a substitute for such advice. While all reasonable attempts have been made to ensure that the information contained herein is accurate, E. Tzioni & Associates LLC accept no responsibility for any errors or omissions it may contain whether caused by negligence or otherwise, or for any losses, however caused, sustained by any person that relies upon it.

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