The Law aimed to modernise the legal framework regarding trademarks to accommodate current commercial needs and practices and align national legislation with EU Directive 2015/2436. Notably, the basic law dates back to 1955 and understandably needed a major overhaul.
Before the introduction of the Law, the legal framework had produced a cumbersome, bureaucratic, and slow system, which had created a backlog at the trademarks registry, hindered the proper administration of legal rights of trade mark proprietors, and was markedly out of line with the technological advancements of our times.
The Law provides for numerous new features designed to simplify procedures about the registration, administration, and handling of a trademark, while it has introduced streamlined features
designed to expedite procedures, reduce costs, enhance transparency and render filing and administration of procedures simpler and faster.
It is important to point out that the Law has maintained the two-tier system of the examination carried out by the Trade Marks Registrar ex officio, under which the latter examines a mark based on both absolute grounds as well as relative grounds. This is the result of a policy decision aimed at assisting small and medium-sized enterprises who may not be in a position to afford watching services and would thus benefit from the Registrar’s vigilance when examining an application.
As discussed above, the Law has introduced numerous new features, the main ones being the following:
· certification marks and collective marks may now be registered;
· the old requirement that a mark is ‘capable of graphical representation’ in order to be registered has been eliminated and replaced with a more flexible and less rigid way of being expressed; a mark may be filed using current technological means, provided that it is filed in a manner that is clear, precise, capable of permanent representation and of being perceived objectively. Accordingly, new types of marks may be filed, such as holograms, pattern marks, motion marks, position marks, etc.;
· once an application for a mark has been filed, it is not possible to amend the representation of the mark, even if the mark has not yet been published;
· a multi-class system of registration has been introduced;
· no power of attorney must be filed; it has been replaced with the filing of a ‘solemn declaration’ by an attorney, who in turn has the responsibility to secure the power of attorney for his or her purposes;
· the various procedures before the Registrar shall be carried out by way of written submissions and hearings would be conducted only by way of exception, when a case is especially complicated and provided it is justified under the circumstances;
· Application of strict time frames for the conducting of procedures (the usual time frame is a two-month period, with the exception of the opposition period, which is a three-month period). Failure to comply with the applicable time frame set down in the Law would lead to the dismissal of a petition or of administrative action;
· the duration of trademark registration is a 10-year period, subject to indefinite further 10-year renewal periods;
· the assignment procedure has been markedly simplified so that proof of the assignment may be satisfied with the filing of an assignment application signed by the registered proprietor of the mark or by his or her lawyer, and by the assignee or his or her respective lawyer. This simple procedure is a far cry from the more elaborate procedure followed under the basic law, which demanded the filing of the assignment agreement duly certified, accompanied by an affidavit setting out the details of the assignment;
· division of a trademark application or of a registered mark: this possibility is an important tool for applicants and trademark proprietors as it enables them to ring-fence that part of the application or mark that is not threatened by any third-party rights, non-use, etc., and separate it from the part of the application or registration that is vulnerable. Notably, the division is also possible in cases where the application or registration concerns a single class and division would concern part of the goods or services covered thereunder;
· there is a single fee for the entire registration procedure;
· possibility to register a protected designation of origin, protected geographical indications, traditional wine indications, and plant varieties as trademarks, provided their protection is provided by EU legislation and Cyprus laws as well as by international conventions to which the Republic of Cyprus is a member; and
· use of amicable mediation during the opposition procedure as a first step to the parties bridging their differences.
The introduction of the Law marks an important milestone in the protection and administration of trademarks and allows applicants and proprietors alike to face the challenging commercial environment with courage and certainty, given the leaner, stronger, faster, and more efficient system put in place. The new legislative procedures, coupled with the technological means of filing, make this an exciting time for users of the Cyprus trademarks system, who can look forward to a fast, transparent, streamlined service.
Our dedicated IP law department is in a position to assist you with all matters concerning Cyprus trademarks and would be delighted to hear from you.
For any queries/ questions, please contact us.