Introduction

A trade mark provides you with several advantages.

Firstly, it is an intangible asset that provides value to your business. Research has shown that between 2007 and the first half of 2023 20% of European private equity and venture capital investment went to companies with existing patents, 40% to those with trade marks, and 15% to firms with both forms of IP protection. Furthermore, companies with pre-existing trade marks received significantly higher investments: 55% more at the venture stage, 45% at the growth stage, and 68% at the buyout stage.

It can be sold or licensed, which can provide a stream of income for your business.

Secondly, a trade mark registration makes it much easier for you to stop third parties from registering trade marks that are similar to yours.

And thirdly, a trade mark registration makes it much easier for you to stop third parties from copying your mark in the course of business.

What can I register as a trade mark?

Following the amendment of the Trade Marks’ Law (Cap 268) in 2020, it has become much easier to apply for a wide variety of marks. Trade marks can be words (including people’s names), designs, letters, numbers, colors, the shape of a product or its packaging, or even sounds.

However, these things can only be registered as a trade mark if:

(a) They can clearly distinguish one company’s products or services from those of other companies, and

(b) They can be clearly shown in the official register in a way that allows both the authorities and the public to know exactly what is being protected. This means that something like a smell or a taste cannot currently be easily registered, as the available technology doesn’t allow for the clear and precise representation of the mark on the Register.

Is my mark available?

It is very good practice to carry out a clearance search before applying to register a trade mark. This is important for two reasons: firstly, you want to make sure that it isn’t similar to someone else’s (who can then oppose your mark); and secondly, you want to make sure that your intended mark isn’t offensive. The second bit is especially important if you’ll be filing in other jurisdictions where you don’t speak the language or where you’re not aware of the cultural norms.

The depth of a clearance search will also determine its cost and, therefore, advice should be sought from a qualified lawyer as to the most appropriate way forward for your specific needs.

Of course, every clearance search has its limitations, and you should discuss these with your lawyer.

Classes

So you’ve decided on what you want to register as a trade mark. The next step is deciding on the class wording.

Classes are broad headings of goods and services that fall under the Nice Classification. For example, software would fall under class 9. Legal services would fall under class 45. There is a nifty tool called TMclass which potential applicants can look at and use to put together a first draft of their class wording.

You want to be quite precise with your classes for several reasons.

Firstly, you can’t add to them after filing your application. If you want to add more goods or services, you need to file a new application.

Secondly, if you add too many classes that you’re not planning on using, your mark can become vulnerable to revocation due to non-use. Essentially you have about five years to begin using your mark for all the goods and services that you’ve registered it in. And although (unlike other jurisdictions) you’re not required to provide evidence of use in Cyprus, issues may arise when a rightsholder attempts to enforce a mark that has not been used after the five-year period. More specifically, the other side may decide to “counterattack” by filing an application to cancel the mark for non-use. Strategy during filing and enforcement should be discussed with a qualified lawyer.

Filing of trade mark application

Once you’ve decided on your proposed mark and your classes, the trade mark application needs to be filed. Cyprus now has a multi-class system and all classes will be included in a single application. It is cheaper — and quicker — to file online.

After filing, the Registrar of Companies and Intellectual Property will assign a number to the trade mark application. This usually happens within a couple of days. This notification is issued on paper and will either be posted or placed in your lawyer’s envelope at the Registrar’s office.

Jurisdictions

Upon filing, you will need to decide if you want to apply for protection in other jurisdictions. You have six months to do so if you want to claim priority from your first application. Claiming priority essentially means that if your application(s) overseas result(s) in registration, protection will be “backdated” to the date of first filing.

Discussing strategy for overseas filings is important, as a trade mark is only valid in the jurisdiction for which it is registered.

After filing

Thereafter, the application will be assessed by the Registrar for (i) compliance with the formalities; (ii) compliance with the classification; (iii) absolute and (iv) relative grounds of refusal.

Communications with the Registrar will take place on paper and not online.

Formalities

If there is a deficiency detected, the applicant will be given two months to remedy it. If the deficiency is not remedied, the application will be deemed to be abandoned. The applicant will be notified accordingly.

Classification

If there are problems with the classification, the applicant will be given two months to remedy it. If the deficiency is not remedied, the application will be deemed to be abandoned. The applicant will be notified accordingly.

The Registrar encourages applicants to use wording directly from TMclass, but of course this is not always possible. You should discuss this with a qualified lawyer.

Absolute grounds of refusal

The Registrar may raise an objection if 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.

You may be able to overcome such an objection if you can prove that your mark has gained distinctiveness through use before the filing date.

In any case, you will be given two months to reply to the Registrar’s objections.

Relative grounds of refusal

The Registrar may also raise an objection if the proposed mark:

  • is identical to an earlier trade mark and both are used for the same products or services, or
  • 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 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.

You may be able to overcome such an objection or opposition if the owner of the earlier right gives written consent to the proposed trade mark, unless doing so would clearly mislead the public (e.g. about the nature, quality, or origin of the goods or services).

In any case, you will be given two months to reply to the Registrar’s objections.

Publication of the mark

Once the application has been examined and if accepted by the Registrar, it will be published in the Official Gazette of the Republic. Publication takes place on the Registrar’s website.

Third parties have three months from the date of application to oppose your application. If this happens, please feel free to look at our guide here so as to know what to expect.

Issuing of the Registration Certificate

If no oppositions from third parties are received, or if an opposition is concluded in your favour, the Registration Certificate will be issued in hard copy. The mark will be valid for ten years from the date of filing.

Renewals

The mark must be renewed every ten years if you want to maintain it. The Registrar sends out reminders by post, but these are often not received (e.g. where an applicant has moved and has not updated their details on the Trade Marks Register).

It is your responsibility to keep an eye on your mark and take the relevant steps to renew it when necessary.

Renewal certificates are issued in hard copy.

 

* 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.