On 12 June 2020, the new Cypriot Law on Trademarks, No 63(I) of 2020, entered into force. Despite its successive amendments, the previous law, dating from 1962, needed a radical overhaul to meet the needs of a modern market. The aim was twofold: (i) to harmonise the Cypriot legislation on trade marks with the requirements of the EU Directive 2015/2436 of 16 December 2015, and (ii) to reform the previous law and, in particular, address the time-consuming opposition, revocation and cancellation proceedings.
This article intends to highlight the most significant changes brought about by the new law, mainly those that go beyond the requirements of the Directive.
As a general remark, the the ex officio search and ex officio rejection of signs which enter in conflict with earlier trade marks is maintained. In addition, an opposition may still be based on both absolute and relative grounds for refusal.
– Written procedures – hearings remain an exception. The previous law was mainly based on oral hearings for all proceedings before the Office and at all the stages of each proceeding. The new law, without abolishing hearings completely, limits them to exceptional cases and only when justified by the circumstances. The significant reduction of hearings will contribute to shortening procedures considerably.
– Introduction of a multiclass classification system. The mono-class system from the previous law is abolished.
– Ten years of trade mark protection. As required by the Directive, the seven-year initial protection and the fourteen-year protection in the event of renewal are replaced by a ten-year renewal cycle.
– Classification with “clarity and accuracy” – the new law required for goods and services to be identified with sufficient clarity and precision. Contrary to many other national and in fact the EUTM system, the new Cypriot law also provides that “old” marks, registered prior to the entry into force of the law, which contain vague or inaccurate terms, are to be further specified in the course of the next renewal process, following instructions of the Office.
– Simplification of trade mark transfers. The evidence for proving a transfer is considerably simplified. The signature of both parties or of their legal representatives in the application for transfer is sufficient by itself. Depending on the case, the signature of only one party is sufficient if a written agreement of the other party to the transfer is joined to the application.
– Division of the trade mark. Both applications and registrations can be divided into two or more separate applications or registrations.
– Friendly settlement. An amicable resolution of the dispute at an early stage of the proceedings, inspired by the cooling-off period for EUTMs, has been introduced in opposition proceedings.
– Non-use as defence in the opposition and invalidity proceedings. In accordance with the Directive, this useful means of defence is included in the new Cypriot law with the expectation that it will discourage oppositions or cancelation actions based on trade marks which are valid on paper only.
– Protection of collective marks. Before the reform, only certification marks were protected in Cyprus. The new law also provides for the protection of collective marks.
– Power of attorney is replaced by lawyer’s affirmation (solemn declaration). Powers of Attorney are no longer required to act before the Office. It is sufficient if lawyers submit an affirmation that they are a member of the Pancyprian Bar Association and legally represent their client.
– Phases of opposition and cancelation proceedings. The law prescribes procedural steps to be followed in opposition proceedings, which closely follow those of opposition proceedings before the EUIPO (i.e. filing, admissibility check, cooling-off, substantiation of the opposition, observations in reply, possibly request for proof of use, response by opponent; in the event of proof of use, one more round).
With the exception of the amicable settlement process, these same steps are to be followed in revocation and invalidity proceedings.
All in all, the new rules will simplify and accelerate Cypriot trade mark proceedings, bringing them more in line with what trade mark owners are used to from EUTM proceedings. The changes are therefore welcome.
_____________________________
To make sure you do not miss out on regular updates from the Kluwer Trademark Blog, please subscribe here.
