Introduction

After your trade mark application has been published in the Official Gazette of the Republic, third parties have three months to oppose your application.

The reasons your application can be opposed include absolute grounds and relative grounds.

An opposition can unfortunately take several years to be concluded.

Absolute grounds of refusal

This is when the proposed mark:

  • is made of things that legally cannot form a trade mark (e.g. it can’t be precisely represented in the Register)
  • isn’t distinctive enough (i.e. it can’t help people tell one business apart from another)
  • just describes the product or service (e.g., its type, quality, quantity, purpose, value, where it comes from, when it was made, or other characteristics)
  • only consists of common words or symbols that people regularly use in everyday language or trade
  • only consists of the shape or another feature of a product when:
  • the shape is naturally required by the product itself,
  • the shape is needed for a technical function, or
  • the shape gives the product its main value
  • goes against public order or morality
  • is misleading (e.g. if it lets the public think the product is of a different type, quality, or origin)
  • uses official state symbols (coats of arms, flags, emblems) from countries without permission
  • includes other protected symbols of major public significance, especially religious symbols or words
  • conflicts with laws that protect protected designations of origins or similar frameworks
  • was applied for in bad faith.

Relative grounds of refusal

These are if the proposed mark:

  • is identical to an earlier trade mark and both are used for the same products or services.
  • is identical or similar to an earlier trademark and the products or services are also identical or similar, creating a risk that the public might be confused or think the two trade marks are connected.

Earlier trade marks in this instance include: national Cyprus marks, EU trade marks, international trade marks that designate Cyprus or the EU, applications for such marks (assuming they later proceed to registration), and also well-known marks.

Other relative grounds of refusal are if the proposed mark:

  • is identical or similar to a well-known earlier mark that has a strong reputation, and the new mark would unfairly benefit from or harm the reputation of the older one, even if the goods or services are not related.
  • has been applied for by an agent or representative of the owner of a trade mark without permission from the owner.

Furthermore, a trade mark application may be refused if:

  • someone already owns rights to an unregistered mark or sign used in trade before the later application, and those earlier rights allow them to stop the later mark.
  • the use of the trade mark can be stopped under another earlier right, such as rights to a name, personality rights, copyright, or industrial property rights.
  • the applicant acted in bad faith and the trade mark would cause confusion with a mark protected in another country.

How does an opposition start?

Sometimes the opponent will send a letter to the applicant, or the applicant’s lawyer, before filing the opposition. This is usually in an effort to settle the dispute amicably.

If such a letter is not sent, or if pre-opposition correspondence does not result in a friendly settlement, the opponent files its opposition online, using the relevant form. They can just include the grounds of opposition (and substantiate the opposition later) or include their substantiation with the opposition form.

What happens next?

After the opposition has been filed, it will be assigned a number.

Both the opponent and the applicant will receive a notification from the Registrar on paper, informing them of the opposition number. The applicant’s notification will also include a copy of the opposition filed.

The parties will then have two months (which can be extended up to six months) to see if they can amicably settle the case. This is called the cooling-off period.

If a settlement is reached, the Registrar must be informed.

If the cooling-off period ends without a settlement, the opposition will enter into the adversarial stage. The Registrar will notify the parties, in writing, of the next steps and the deadlines to be met. This notification will be sent in hard copy.

The adversarial stage begins with the opponent substantiating the opposition (if they haven’t already done so) within two months. The evidence must be in the form of an affidavit, with exhibits attached if necessary. The evidence to be filed will depend on the grounds of the opposition being relied upon, but may include copies of prior trade mark registrations, applications, renewals, etc.

If the opponent does not substantiate the opposition, the opposition will be dismissed.

The applicant will then be asked to file its observations within two months. If it does not do so, the Registrar will decide the opposition on the basis of the documents it has before it. If it does file its observations, the opponent may be allowed to file a reply to the observations within two months, if the Registrar considers it appropriate.

The adversarial stage is then considered complete and the decision will be reserved. Decisions can often take several months to be handed down.

Proof of use

The applicant may, at the same time as filing its observations, request proof of use of the prior mark(s) that the opponent is relying on. This can only be done if the prior mark(s) have been registered for at least five years.

The opponent must submit evidence showing that it has actually used the trade mark(s), or that there are valid reasons why it has not used it. This must be done within the deadline set by the Registrar (usually two months).

If the opponent does not provide the required evidence on time, or if the evidence it provides is clearly insufficient or not relevant, the Registrar will immediately end the process and dismiss the opposition.

If the evidence only proves use of the trade mark for some of the goods or services, then the opposition will be considered valid only for those specific goods or services.

The evidence must relate to the place, time, extent, and nature of the use of the earlier trade mark(s) for the goods or services on which the opposition is based.

The evidence usually includes supporting documents such as packaging, labels, price lists, catalogues, receipts, invoices, photographs, advertisements (in print or online), and other marketing materials.

Costs

Although costs may technically be awarded, in practice the Registrar will not usually do so. Each party will normally have to bear its own costs.

 

* The content of this blog post is intended for general informational purposes only and does not constitute legal advice. Reading this blog does not create a lawyer-client relationship.