Cyprus modernizes Trade Marks Act following implementation of the EU Trade Mark Directive

When it comes to Directive 2015/2436 (the new Trade Mark Directive, which had a transposition deadline of 15 January 2019), this blog has recently reported on the Finnish and Greek implementation thereof [here and here]. With Finland and Greece in mind, one might wonder what the status is in other EU Member States? Attention can be turned to Cyprus, and in this regard, one might ask the question of what has been the Cypriot take on implementation?

Katfriend Nicoletta Epaminonda discusses the Cypriot transposition of the Trade Mark Directive and reflects on what the future might hold for trade marks in this Member State.

Here’s what she writes:

"The new Cypriot Trade Marks Law Act (the Trade Marks Law Act) was presented by the Intellectual and Industrial Property Section of the Registrar of Companies and Official Receiver, at a seminar organized jointly with the EUIPO in Nicosia, on 7 February 2019. No copy of the bill is yet available.

From the outset, the Trade Marks Law is still a bill and has yet to be passed by the Cypriot House of Representatives (Parliament). However, according to what was said at the presentation, it is expected to be enacted by the House of Representatives in the near future.

The Trade Marks Law will transpose the new Trade Mark Directive and replace the old colonial Trade Marks’ Law (Cap. 268), which was in dire need of modernisation from both a substantive and a procedural aspect.

New features in the proposed Trade Marks Law Act

As indicated above, the purpose of the new Act is to approximate national trade mark legislation to the trade mark law in other EU countries, as well as to transpose the Trade Mark Directive into domestic law. Herewith are some relevant changes which will be brought about by the new Trade Mark Act: 

• The graphical representation requirement will be abolished. This means that less conventional signs might become easier to register.
• Certain technical requirements have been presented that would make it easier for trade mark applicants to register marks in a particular format. For instance, word marks may be applied for with Greek or Roman (Latin) characters. In addition, images might be uploaded in .jpg format, sounds in .mp3 format, video in .mp4 format and colours using the RGB or HEX colour codes.
• Contrary to the Trade Marks’ Law (Cap. 268), it will no longer be possible to amend the representation of the mark after registration. The current practice is that if changes to the representation of the mark are minimal (e.g. slight change to the shade of a colour), it is possible to apply for the representation to be changed. This possibility will no longer to be available.
• A multi-class system will be introduced. This is expected to be enormously beneficial to SMEs and individuals who are applying for trade mark protection, as the filing fees will be lower. Moreover, publication fees and fees for the issuing of a Registration Certificate will be abolished, as there will be a single fee for filing.
• Along with the multi-class system, the application will now be “divisible”. This means that if at some point during the application, part of the application is opposed, then that part of the application can be “severed”, and the rest of the application may proceed to registration.
• Examination of applications will still include absolute and relative grounds, including examination of the formalities and classification.
• The opposition period will be extended. Whereas it is currently two months, the opposition period will become three months.
• Marks will no longer be published in the Official Gazette of the Republic. They will instead be published on the website of the Intellectual and Industrial Property Section.
• A modern renewal period will finally be introduced. Currently, a mark is initially registered for 7 years, and then renewed for 14-year periods of protection. With the enactment of the new law, the protection of the mark will be for a 10-year period, bringing Cyprus in line with many other jurisdictions.
• The need for clear and precise wording of the designated goods and services specified in the trade mark application will be enshrined in law. The ability will be given to applicants to “correct” classifications of older marks during renewal, in order to bring marks in line with this requirement. 
• A change that many will welcome with relief is the abolition of the power of attorney. The current practice in Cyprus, with the exception of some procedures (i.e. the online application to register a trade mark and the online application to renew a trade mark), an original signed and stamped power of attorney must be filed with the Registrar’s office when filing any action. This will be replaced with a declaration/attestation at the bottom of each application form that will need to be signed by the advocate signing the form. 
• The procedure for the transfer of ownership of a mark will be simplified. The current procedure requires supporting documentation that proves the change of ownership – in either the original or a certified copy thereof – which must be translated into Greek together with an attested affidavit to accompany the translation. This will now be replaced by a form requiring signature by both parties.
• Detailed provisions concerning certification and collective marks will be introduced, as well as protection of plant varieties, for traditional terms/specialties and geographical indications.
• Finally, the opposition procedure will be re-hauled. It is widely acknowledged that the current administrative opposition procedure is time-consuming and inefficient. The opposition procedure will therefore be replaced with a procedure conducted entirely in writing (with the possibility of requesting oral hearings where these are absolutely necessary). Non-use will also be introduced as a defence. In this regard, the most important change is that amicable settlements will be actively encouraged. 

We will keep an eye on the progress of this bill, and keep you posted."