1.1. Sources of law
The principal sources of law and regulation governing the registration and protection of trademarks in Cyprus are the Cyprus Trademarks Law, Cap. 268 and the Trademarks Regulations, as amended.
On June 2020, the Cyprus Parliament passed the new trademarks law incorporating the EU Trademarks Directive (Directive (EU) 2015/2436) into national law, which, as a result, simplifies the procedures pertaining to the registration, administration and handling of a trademark.
The following additional laws are also relevant to trademarks legislation:
- The Control of Movement of Goods Infringing Intellectual Property Rights Law No. 61(I)/2018. The authority responsible for this is the Customs Department. This legislation confers exclusive competence in the handling of goods infringing intellectual property rights, especially when there is a prima facie suspicion that the goods infringe trademarks and/or any other intellectual property right.
- The Trademark Law Treaty Ratifying Law No. 12(III)/1996 is the main treaty which aims to standardize the procedure for registering a trademark in multiple jurisdictions.
- The Madrid Agreement as well as the Madrid Protocol - their aim is to provide a cost-effective system for obtaining and maintaining trademark registrations across 122 countries.
- The Nice Agreement. Under this treaty each of the countries party to this Agreement has classified the goods or services for which the trademarks are registered.
Following the new amendments to the Trademarks Law, use as a source of trademark rights is recognized. Cyprus has harmonized its law with article 6(2) of the Trademark Directive about earlier rights. Earlier rights may be established even if a trademark is not registered but an application for it has at least been filed.
The main difference between the non-registered and registered trademarks is that the owners of the non-registered trademarks have no right to file an infringement action.
However, owners of unregistered marks are free to bring a passing-off action against any party which passes off its goods as those of the rights holder and to claim damages in respect thereof.
1.2. Substantive law
Cypriot law does not distinguish between famous trademarks, well-known trademarks and trademarks with a reputation. All trademarks are treated the same and there is not a broader range for protection for a specific "luxury industry" in Cyprus.
A trademark can be enforced against a domain name.
Trade names are protected under different legislation, namely the Partnerships and Business Names Law.
To date, the IP Department in Cyprus has not examined a case against the unauthorized use in social media. However, if a trademark is being used by a third party on social media without consent, the question for the brand owner is whether it actually presents a real problem to the owner.
The owner should think twice as to whether to proceed with any actions against those who use the trademark in social media since it will be very difficult to identify who is behind the infringing material as social media accounts can be set up anonymously.
An unauthorized use of a mark in comparative advertising would be liable for trademark infringement. However, the law recognizes the benefit of competition in several laws and regulations within EU member-states. Those provide an exemption for use of a third party's trademark in lawful comparative advertising. A comparative advertisement should:
- not be misleading;
- compare goods or services meeting the same needs or intended for the same purpose;
- objectively compare one or more material, relevant, verifiable and representative features of those goods and services, which may include price;
- not discredit or denigrate the competitor or its trademarks;
- for products with designation of origin, relate in each case to products with the same designation;
- not take unfair advantage of the reputation of the competitor's trademark;
- not present goods or services as imitations or replicas; and
- not create confusion among traders, between the advertiser and a competitor, or between the advertiser's trademarks, trade names, other distinguishing marks, goods or services and those of a competitor.
Originally published by The Global Legal Post .
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.