Registration of a Trade Mark
Without protection the logo of a business is simply a mark depicted on their product, website or workplace. Once protected this mark becomes part of the intellectual property of the company. It has value and that value rises with the expansion of the business in general. With the registration, the value is protected.
1.2 Builds an Asset
When registered the logo of a firm becomes an Asset.
It can give recognition to a product and can most certainly be protected from similar logos or marks.
No one else can have an identical or similar logo unless the proprietor gives their consent. This protection is immediately granted with registration and the proprietor needs not prove any other fact. The rights of the proprietor are defined.
1.5 Ground for objection
Once registered the trademark gives the proprietor grounds for objection upon application for an identical or similar mark is filed and also when an identical or similar mark is used without their consent. If a logo is not registered, it can be very difficult to protect it against an identical or a similar mark being used or pending to be registered.
1.6 Prevents Counterfeiting & Fraud
If a trade mark is registered and protected, rival companies are prevented from using an identical or similar mark with the intention of misleading the public.
2: Registration in the Republic of Cyprus
The registration of a trademark in Cyprus is regulated by Law. The process begins with the filing of an application with the Registrar of Trademarks. The proprietor of the Trade Mark can either be a physical or a legal person.
Cyprus Companies that have their registered office in Cyprus are allowed to file an application with the Registrar, even though they carry out their business elsewhere.
2.2 Requirements and Procedure.
The Trademark intended to be registered must meet certain conditions before registration is guaranteed. It shall be unique and not similar to another existing protected trademark. Colours, words and specific symbols will also be protected in relation to the trademark but not alone.
Once received the Trade Mark will be examined and will be either be accepted as it is or under conditions, or be rejected.
If accepted then it is published in the Cyprus Gazette. If no objection is filed within the time prescribed, then the proprietor has twelve months to proceed with registration. The registration must be renewed every 7 years.
If an objection is filed then the Registrar will hear both partied before coming to a decision. That decision is appealable to the Court.
2.3 Grounds for objection
The Laws of the Republic of Cyprus provide the grounds upon which either a person (natural or legal) or the Registrar of Trademarks may object registration. A person (natural or legal) cannot object on the grounds of similarity if their logo is not a registered trademark.
In the Republic of Cyprus the actual expenses paid to the Registrar of Companies start from Euros 150. These are required for the filing of the Application and Issuance of the Registration Certificate. The costs will vary in the event of an objection.
2.5 National, European and International
Once registered in Cyprus the Trade Mark is only protected in Cyprus. The proprietor has an option to register and protect it in more countries and the procedure to do that is set out in the following chapters. It is possible to register and protect it in several countries from the beginning or register it in Cyprus first and then decide to register and protect it in other countries according to the demand of the business.
3: EU Protection
3.1 Office for the Harmonisation of the Internal Market (OHIM)
A legal or natural person wishing to protect their Trade Mark in all member states of the European Union has the option to file one application via the OHIM. If successful the Trade Mark will be registered and protected in all EU member states and will qualify as a “Community Trade Mark” (CTM). If it is partly successful then the Trade Mark will not be registered.
3.2 The Application, Procedure and Costs
The application is filed online via the OHIM website and costs Euros 900.
Once filed, the application will be examined and once accepted it will be published. If no objection is filed within the time specified, the proprietor may proceed with registration.
The application for registering a Community Trademark will only be successful if accepted by all member states.
Once registered the Community Trade Mark must be renewed every ten years.
3.3 The Laws
The CTM is governed by the European Directive 2008/95/EC and Regulations 207/2009, 2868/95 and 2869/95. These inter alia outline the rights conferred to the proprietor of a CTM.
There is also extensive case law on the use of CTM which clears certain ambiguities of the Laws.
4: International Protection
4.1. World Intellectual Property Office (WIPO)
WIPO was established in 1976 and is the world’s office for intellectual property services, policy, information and cooperation.
4.2. Application, procedure and costs
The protection of a trade mark is effected by using the Madrid System. This system offers the ability to register and manage marks worldwide.
The proprietor of the trade mark needs to file one national application at the country where they carry out their business and once they have a number, file the international application via WIPO in one language, and pay one set of fees (which can be calculated online).
Once the international application is filed and examined, WIPO will publish it in the WIPO Gazette of International Trade Marks. Then it will notify the national office in each country protection is sought and send the proprietor a certificate of registration. This certificate is not equivalent to a certificate of registration issued by a National or Regional IP Office.
The Office of each country protection is sought examines the application and have the right to either grant or refuse protection. Their decision will be taken within 12 or 18 months, will be sent to the proprietor and published on the ROMARIN database.
4.3. The Benefits of the Madrid System
It saves time and money because only one application is required to be filed for all countries, instead for a separate application at each country.
There is no need to pay for translations into multiple languages or to spend extra time working through the administrative procedures of multiples offices.
It offers the potential for simultaneous protection in up to 111 territories of its 95 members that includes the majority of developed countries and many developing and transition countries.
5.1 When can a dispute over a trademark arise?
The dispute can arise either upon the filing of an objection to an application for registration of a trademark similar or identical with one already existing. Alternatively it arises when the proprietor takes action against a party who without the proprietor’s consent uses an identical or a similar trademark. This means that disputes can arise during the course of business. The party at fault may attempt to infringe trademark rights either on purpose or without such intention. In any event the proprietor has the right to object. For this reason the proprietor must at all times be aware of similar products, similar logos and also how their own trademark is used by those with a license to use it.
5.2 Who infringes trademark rights?
Apparently this will be another business, not necessarily a competitor. It can also be a reseller of your product who puts your product on a market for which consent has not been granted.
5.3 What can be done?
Below is an indicative list of courses of action available to the proprietor. However, upon suspicion of an infringement, a proprietor must receive legal advice.
When a proprietor is informed about a possible or actual infringement can let the party at fault know the existence of the registered trademark which explains the infringement and request a) an immediate action so that the infringement comes to an end and b) signing a declaration
Action / interim order
If the party at fault does not cease infringement, the proprietor can file and action and obtain an interim order so that the infringement is put on hold until the proceedings are completed.
Application at the customs
When a proprietor is aware that another party will import goods which infringe trademark rights can file a request at the customs of the country the goods are intended to be imported for the seizure of the goods. An examination will follow in order to determine whether an infringement actually took place. This process has been made available under EU Law and Regulations 1383/2003 and 1891/2004 and will be further examined below.
Objection via the Registrar of Trademarks
This is the only measure at the point of the filing of an application
5.4 Costs of action
These depend on which of the above measures will be taken. Not all of the above are necessary under every circumstance hence legal advice must be obtained.
The costs can ultimately be borne by the party at fault however the party requesting initial legal advice will do so at their own cost. There is a possibility to recover these at a later stage, by the party at fault.
Limassol January 2016
Note of the Author: The above does not constitute a legal advice. Please contact one of our associates at 25107587 or [email protected] for further information and a one to one appointment and an opinion tailored to your needs.