- Short Title
- DEFINITIONS
- SUBSTANTIVE PROVISIONS
- The Register
- 3. The register of trade marks.
- 4. Effect of registration and the action for infringement. No action for infringement of unregistered trademark.
- 5. Registration to be in respect of particular goods or services.
- 6. Right given by registration in Part A, and infringement thereof.
- 7. Right given by registration in Part B and infringement thereof.
- 8. Infringement by breach of certain restrictions
- 9. Saving for vested rights.
- 11. Registrability and validity of registration. Distinctiveness requisite for registration in Part A.
- 12. Capability of distinguishing requisite for registration in Part B.
- 13. Prohibition of registration of deceptive etc. matter.
- 14. Prohibition of registration of identical and resembling trade marks.
- 15. Registration in Part A to be conclusive as to validity after seven years.
- 16. Registration subject to disclaimer.
- 17. Words used as name or description of an article or substance or services.
- 18. Effect of limitation as to colour, and of absence thereof.
- 19. Application for registration.
- 20. Opposition to registration.
- 21. Registration.
- 22. Duration and renewal of registration
- 23. Registration of parts of trade marks and of trade marks as a series.
- Assignment and Transmission
- 24. Powers of, and restrictions on, assignment and transmission.
- 25. Certain trade marks to be associated so as to be assignable and transmissible as a whole only.
- 26. Power of registered proprietor to assign and give receipts.
- 27. Registration of assignments and transmissions.
- 28. Use and non-use
- 29. Registered users.
- 30. Proposed use of trade mark by corporation to be constituted, etc.
- 31. Use of one of associated or substantially identical trade marks equivalent to use of another.
- 32. Use of trade mark for export trade.
- Rectification and correction of the register
- 33. General power to rectify entries in register.
- 34. Power to expunge or vary registration for breach of condition.
- 35. Correction of register.
- 36. Alteration of registered trade mark.
- 37. Adaptation of entries in register to amended or substituted classification of goods or services.
- 37A. Certifying Trade Marks – First Schedule.
- The Register
- GENERAL AND MISCELLANEOUS
- (Section 37A)
- (Section 59)
THE TRADE MARKS LAW
TABLE OF CONTENTS Section
1. Short title
DEFINITIONS
2. Interpretation
REGISTRATION, INFRINGEMENT AND OTHER SUBSTANTIVE PROVISIONS
The register - The Register of Trade Marks.
- Effect of registration and the action for infringement
- No action for infringement of unregistered trade mark
- Registration to be in respect of particular goods or services
- Right given by registration in Part A, and infringement thereof
- Right given by registration in Part B, and infringement thereof
- Infringement by breach of certain restrictions
- Saving for vested rights
- Saving for use of name, address, or description of goods
- Registrability and validity of registration
- Distinctiveness requisite for registration in Part A
- Capability of distinguishing requisite for registration in Part B
- Prohibition of registration of deceptive, etc. matters
- Prohibition of registration of identical and resembling trade marks
- Registration in Part A to be conclusive as to validity after seven years
- Registration subject to disclaimer
- Words used as name or description of an article or substance or services
- Effect of limitation as to colour, and absence thereof
- Procedure for, and duration of, registration
- Application for registration
- Opposition to registration
- Registration
- Duration and renewal of registration
- Registration of parts of trade marks and of trade marks as a series
- Assignment and transmission
- Powers of, and restrictions on, assignment and transmission
- Certain trade marks to be associated so as to be assignable and transmissible as a whole only
- Power of registered proprietor to assign and give receipts
- Registration of assignments and transmissions
- Use and non-use
- Removal from register and imposition of limitations on ground of non-use
- Registered users
- Proposed use of trade mark by corporation to be constituted, etc.
- Use of one of associated or substantially identical trade marks equivalent to use of another
- Use of trade mark for export trade
- General power to rectify entries in register
- Power to expunge or vary registration for breach of condition
- Correction of register
- Alteration of registered trade mark
- Adaptation of entries in register to amended or substituted
Rectification and correction of the register
classification of goods or services
37A Certifying trade marks – First Schedule
GENERAL AND MISCELLANEOUS
Rules and fees - Power of the Council of Ministers to make Rules
- Fees
- Powers and duties of Registrar
- Preliminary advice by Registrar as to distinctiveness
- Hearing before exercise of Registrar’s discretion
- Power of Registrar to award costs
- Annual reports by Registrar
- Legal proceedings and recourses
- Registration to be prima facie evidence by validity
- Certificate of validity
- Costs of Registrar in proceedings before Court, and payment of costs by Registrar
- Trade usage, etc to be considered
- Registrar’s appearance in proceedings involving rectification
- Procedure in cases of option to apply to court or to Registrar
- Evidence
- Mode of giving evidence
- Evidence of entries in register
- Evidence of things done by Registrar
- Offences
- Falsification of entries in register
- Fine for falsely representing a trade mark as registered
- Miscellaneous
- Change of form of trade connection not to be deemed to cause deception
- Jointly owned trade marks
- Trusts and equities
- Recognition of agents
- Transitional provisions. Second Schedule
- Savings
FIRST SCHEDULE (In accordance with Section 37A)
CERTIFYING TRADE MARKS
SECOND SCHEDULE (In accordance with Section 59)
ASSIGNMENTS AND TRANSMISSIONS (BEFORE APPOINTED DAY) WHICH GIVE EXCLUSIVE RIGHTS IN DIFFERENT PLACES IN CYPRUS
SAVING AS TO THE RETROSPECTIVITY OF PROVISIONS WHICH RELATE TO ASSIGNMENTS AND TRANSMISSIONS
ASSOCIATION OF TRADE MARKS WHICH CAN BE ASSIGNED OR TRANSMITTED AS A WHOLE ONLY
PREVIOUS USE OF TRADE MARK BY A PERSON WHO BECOMES
REGISTERED USER AFTER AN APPLICATION WHICH IS SUBMITTED
WITHIN ONE YEAR OF APPOINTED DAY
USE OF TRADE MARK FOR EXPORT TRADE BEFORE APPOINTED DAY
-------- ***** -------
TRADE MARK LAW
Short Title
Cap. 268 63 of 62 69 of 71 206 of 90
1. This Law may be cited as the Trade Marks Law.
DEFINITIONS
2. Interpretation
(1) In this Law, unless the context otherwise requires, the following expressions have the meanings
hereby assigned to them respectively, that is to say — “the appointed day” means the date of the commencement of this Law, “the assignment” means assignment by act of the parties concerned,
14 of 1960 50 of 1962 11 of 1963 8 of 1969 40 of 1970 58 of 1978 1 of 1980 35 of 1982 29 of 1983 *
“the Court” means the competent District Court except for the recourse under Article 146 of the Constitution which is exercised before the Supreme Court.
“limitations” means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold, or otherwise traded in, in any place within Cyprus or as to use in relation to goods to be exported to any market outside Cyprus,
“mark” includes a device, brand, heading, label, ticket, name signature, word, letter, numeral, or any combination thereof, “permitted use” has the meaning assigned to it by subsection (1) of section 29, “prescribed”, means, in relation to proceedings before the Court, prescribed by Rules of Court, and, in other cases prescribed by this Law or any rules made thereunder, “the register” means the register of trade marks kept under this Law, “registered trade mark” means a trade mark that is actually on the register,
* See the Table to the Courts of Justice (Amendment) Law 29/83.
“registered user” means a person who is for the time being registered as such under section 29, “the Registrar” means the Registrar and Official Receiver and includes any other person appointed by the Council of Ministers to exercise all or any of the powers and perform all or any of the duties of a Registrar, “rules” means rules made by the Council of Ministers under section 37 or section 38,
2 of N.69/71 2(a) of N.206/90
“trade mark” means except as regards certifying trade mark, a mark used or proposed to be used in relation to goods or services for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods or services and some person having the right either as proprietors or as registered user to use the mark, whether with or without any indication of the identity of that person,
“transmission” means transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer not being assignment.
2(b) of N.206/90
(2) References in this Law to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references, therein to the use of a mark in relation to goods or services shall be construed as references to the use thereof upon, or in physical or other relation to, goods.
REGISTRATION, INFRINGEMENT AND OTHER
SUBSTANTIVE PROVISIONS
The Register
3. The register of trade marks. - (1)
- These shall continue to be kept at the Office of the Registrar for the purposes of this Law the record called the register of trade marks, wherein shall be entered all registered trade marks with the names, addresses and descriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of all registered users, disclaimers, conditions, limitations, and such other matters relating to registered trade marks as may be described.
(2) The register shall continue to be divided into two parts called respectively Part A and Part B.
- (3)
- The register shall at all convenient times be open to the inspection of the public, subject to such regulations as may be prescribed.
(4) The register shall be kept under the control and management of the Registrar.
4. Effect of registration and the action for infringement. No action for infringement of unregistered trade mark.
No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark, but nothing in this Law shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
3 of N.206/90
5. Registration to be in respect of particular goods or services.
A trade mark must be registered in respect of particular goods or services or classes of goods or services,
and any question arising as to the class within which any goods or services fall shall be determined by the
Registrar, whose decision shall be final.
4(a) of N.206/90
6. Right given by registration in Part A, and infringement thereof.
(1) Subject to the provisions of this section, and of sections 9 and 10, the registration (whether before or after the commencement of this Law) of a person in Part A of the register as proprietor of a trade mark in respect of any goods or services shall if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods or services and, without prejudice to the generality of the foregoing words that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade, in relation to any goods or services in respect of which it is registered, and in such manner as to render
the use of the mark likely to be taken either — - (a)
- as being use as a trade mark, or
- (b)
- in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade.
4(b) of N.206/90 - (2)
- The right to the use of a trade mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in, in any place, in relation to goods to be exported to any market or in relation to services rendered to any place or in any other circumstances, to which, having regard to any such limitations, the registration does not extend.
- (3)
- The right to the use of a trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person —
- (a)
- in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or
- (b)
- in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connection in the course of trade between any person and the goods.
- (4)
- The use of a registered trade mark, being one of two or more registered trade marks that are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration as aforesaid, shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks.
5 of N.206/90
7. Right given by registration in Part B and infringement thereof. - (1)
- Except as provided by subsection (2) of this section, the registration (whether before or after the commencement of this Law) of a person in Part B of the register as proprietor of a trade mark in respect of any goods or services shall, if valid give or be deemed to have given to that person the like right in relation to those goods or services as if the registration had been in Part A of the register, and the provisions of section 6 shall have effect in like manner in relation to a trade mark registered in Part B of the register as they have effect in relation to a trade mark registered in Part A of the register.
- (2)
- In any action for infringement of the right to the use of a trade mark given by registration as aforesaid in Part B of the register, otherwise than by an act that is deemed to be an infringement by virtue of section 8, no injunction or other relief shall be granted to the plaintiff if the defendant establishes to the satisfaction of the Court that the use of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods or services either as proprietor or as registered user to use the trade mark.
8. Infringement by breach of certain restrictions.
(1) Where, by a contract in writing made with the proprietor or a registered user of a registered trade mark, a purchaser or owner of goods enters into an obligation to the effect that he will not do, in relation to the goods, an act to which this section applies, any person who, being the owner for the time being of the goods and having notice of the obligation, does that act, or authorizes it to be done, in relation to the goods, in the course of trade or with a view to any dealing there with in the course of trade, shall be deemed thereby to infringe the right to the use of the trade mark given by the registration thereof, unless that person became the owner of the goods by purchase for money or money’s worth in good faith before receiving notice of the obligation or by virtue of a title derived through another who so became the owner thereof.
(2) The acts to which this section applies are — - (a)
- the application of the trade mark upon the goods after they have suffered alteration in any manner specified in the contract as respects their state or condition, get-up or packing,
- (b)
- in a case in which the trade mark is upon the goods, the alteration, part removal or part obliteration thereof,
- (c)
- in a case in which the trade mark is upon the goods, and there is also thereon other matter, being matter indicating a connection in the course of trade between the proprietor or registered user and the goods, the removal or obliteration, whether wholly or partly, of the trade mark unless that other matter is wholly removed or obliterated,
- (d)
- in a case in which the trade mark is upon the goods, the application of any other trade mark to the goods;
- (e)
- in a case in which the trade mark is upon the goods, the addition to the goods or any other matter in writing that is likely to injure the reputation of the trade mark.
(3) In this section references in relation to any goods to the proprietor, to a registered user, and to the registration, of a trade mark shall be construed, respectively, as references to the proprietor in whose name the trade mark is registered, to a registered user who is registered, and to the registration of the trade mark, in respect of those expression “upon” includes in relation to reference to physical relation thereto.
6 of N.206/90
9. Saving for vested rights. Nothing in this Law shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in
relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior— - (a)
- to the use of the first mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or
- (b)
- to the registration of the first mentioned trade mark in respect of those goods or services
in the name of the proprietor or a predecessor in title of his, whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods or services under subsection (2) of section 14.
7 of N.206/90
10. Saving for use of name, address, or description of goods or services. No registration of a trade mark shall
interfere with — - (a)
- any bona fide use by a person of his own name or of the name of his place of business, or of the name, or of the name of the place of business, or of any of his predecessors in business; or
- (b)
- the use by any person of any bona fide description of the character or quality of his goods or services, not being a description that would be likely to be taken as importing any such reference as is mentioned in paragraph (b) of subsection (1) of section 6.
2 of N.63/62
8 of N.206/90
11. Registrability and validity of registration. Distinctiveness requisite for registration in Part A.
(1) In order for a trade mark to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars — (a) the name of a company, individual, or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) an invented word or invented words; (d) a word or words having no direct reference to the character or quality of the goods or
services, and not being according to its ordinary signification a geographical name or a surname.
(e) any other distinctive mark, but a name, signature or word or words, other than such as fall within the descriptions in the foregoing paragraphs (a), (b), (c) and (d), shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness. - (2)
- For the purposes of this section “distinctive” means adapted, in relation to the goods or services in respect of which a trade mark is registered or proposed to be registered, to distinguish goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
- (3)
- In determining whether a trade mark is adapted to distinguish as aforesaid the Registrar may have regard to the extent to which —
- (a)
- the trade mark is inherently adapted to distinguish as aforesaid; and
- (b)
- by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid.
2 of N.63/62
9 of N.206/90
12. Capability of distinguishing requisite for registration in Part B.
(1) In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods or services in respect of which it is registered or proposed to be registered, of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in the case of which no such connection subsists either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(2) In determining whether a trade mark is capable of distinguishing as aforesaid the Registrar may
have regard to the extent to which — - (a)
- the trade mark is inherently capable of distinguishing as aforesaid; and
- (b)
- by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid.
(3) A trade mark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trade mark or any part or parts thereof. - Prohibition of registration of deceptive etc. matter. It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.
- 10 of N.206/90
- Prohibition of registration of identical and resembling trade marks.
- (1)
- Subject to the provisions of subsection (3), no trade mark shall be registered in respect of any goods or description of goods or services which are closely related with these goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods or services which are closely related with these goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion.
- (2)
- Subject to the provisions of this law, a trade mark cannot be registered by any person in respect of any services if it is essentially identical or resembles in a way that may cause confusion a trade mark which is registered or for which an application for registration has been submitted by a different person in respect of the same services, services of the same description with those services or goods which are closely related with those services.
- (3)
- In case of honest concurrent use, or of other special circumstances which in the opinion of the Court or the Registrar make it proper so to do, the Court or the Registrar may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or services or description of goods or services by more than one proprietor subject to such conditions and limitations, if any as the Court or the Registrar, as the case may be, may think it right to impose.
- (4)
- Where separate applications are made by different persons to be registered as proprietors respectively of trade marks that are identical or nearly resemble each other, in respect of the same goods or services or description of goods or services, the Registrar may refuse to register any of them until their rights have been determined by the Court, or have been settled by agreement in a manner approved by him or, on recourse, by the Court.
15. Registration in Part A to be conclusive as to validity after seven years. - (1)
- In all legal proceedings relating to a trade mark registered in Part A of the register (including application under section 33) the original registration in Part A of the register of the trade mark shall, after the expiration of seven years from the date of that registration, be taken to be valid in all respects, unless —
- (a)
- that registration was obtained by fraud; or
- (b)
- the trade mark offends against the provisions of section 13.
- (2)
- Nothing is subsection (1) of section 7 shall be construed as making applicable to a trade mark, as being a trade mark registered in Part B of the register, the foregoing provisions of this section relating to a trade mark registered in Part A of the register.
16. Registration subject to disclaimer. If a trade mark — - (a)
- contains any part not separately registered by the proprietor as a trade mark; or
- (b)
- contains matter common to the trade or otherwise of a non-distinctive character, the Registrar or the Court, in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register —
- (I)
- that the proprietor shall disclaim any right to the exclusive use of any part of the trade mark, or to the exclusive use of all or any portion of any such matter as aforesaid, to the exclusive use of which the Registrar or the Court hold him not to be entitled; or
(II) that the proprietor shall make such other disclaimer as the Registrar or the Court may
consider necessary for the purpose of defining his rights under the registration:
Provided that no disclaimer on the register shall affect any rights of the proprietor of a trade
mark except such as arise out of the registration of the trade mark in respect of which the
disclaimer is made.
11 of N.206/90
17. Words used as name or description of an article or substance or services.
(1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use, after the date of the registration, of a word or words which the trade mark contains, or of which it consists, as the name or description of an article or substance or services:
Provided that, if it is proved either — - (a)
- that there is a well-known and established use of the word or words as the name or description of the article or substance or services by a person or persons carrying on a trade therein, not being use in relation to goods or services connected in the course of trade with the proprietor or a registered user of the trade mark, or
- (b)
- that the article or substance or services was formerly manufactured under a patent (being a patent in force on, or granted after, the 27th day of April, 1920) or services previously rendered under a procedure secured by patent, that a period of two years or more after the cesser of the patent has elapsed, and that the word or words is or are the only practicable name or description of the article or substance or services, the provisions of the next succeeding subsection shall have effect.
(2) Where the facts mentioned in paragraph (a) or (b) of the proviso to subsection (1) are proved with respect to any word or words, then — - (a)
- if the trade mark consists solely of that word or those words, the registration of the trade mark, so far as regards registration in respect of the article or substance or services in question or of any goods of the same description or of any services of the same description, shall be deemed for the purposes of section 33 to be an entry wrongly remaining on the register;
- (b)
- If the trade mark contains that word or those words and other matter, the Court or the Registrar, in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance or services in question and of any goods of the same description or any services of the same description, may in case of a decision in favour of its remaining on the register require as a condition thereof that the proprietor shall disclaim any right to the exclusive use in relation to that article or substance or services and any goods of the same description or any services of the same description of that word or those words, so, however, that no disclaimer on the register shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made; and
- (c)
- for the purposes of any other legal proceedings relating to the trade mark —
- (I)
- if the trade mark consists solely of that word or those words, all rights of the proprietor, by registration or otherwise, to the exclusive use of the trade mark in relation to the article or substance or services in question or to any goods of the same description or any services of the same description; or
(II) if the trade mark contains that word or those words and other matter, all such rights of
the proprietor to the exclusive use of that word or those words in such relation as aforesaid, shall be deemed to have ceased on the date at which the use mentioned in paragraph (a) of the proviso to the foregoing subsection first became well known and established, or at the expiration of the period of two years mentioned in paragraph (b) of that proviso.
(3) No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration in force at the commencement of this Law or thereafter shall, notwithstanding anything in section 15, be deemed for the purposes of section 33 to be an entry made in the register without sufficient cause, or an entry wrongly remaining on the register, as the circumstances may require:
Provided that the foregoing provisions of this subsection shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.
18. Effect of limitation as to colour, and of absence thereof. A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by the Registrar or the Court, as the case may be, having to decide on the distinctive character of the trade mark.
If and so far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.
Procedure of, and duration of, registration.
19. Application for registration. - (1)
- Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it must apply in writing to the Registrar in the prescribed manner for registration either in Part A or in Part B of the register.
- (2)
- Subject to the provisions of this Law, the Registrar may refuse the application, or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may thing right.
- (3)
- In the case of an application for registration of a trade mark in Part A of the register, the Registrar may, if the applicant is willing, instead of refusing the application, treat it as an application for registration in Part B and deal with the application accordingly.
- (4)
- In the case of a refusal or conditional acceptance, the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat, and the decision shall be subject to recourse to the Court.
- (5)
- A recourse under this section shall be made in the prescribed manner, and on the recourse the Court shall, if required, hear the applicant and the Registrar, and shall make an order determining whether, and subject to what amendments, modifications, conditions or limitations, if any, the application is to be accepted.
- (6)
- Recourses under this section shall be heard on the materials stated as aforesaid by the Registrar, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the Registrar, other than those so stated as aforesaid by him, except by leave of the Court hearing the appeal. Where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of costs on giving notice as prescribed.
- (7)
- The Registrar or the Court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon terms as the Registrar or the Court, as the case may think fit.
20. Opposition to registration.
(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon may be after acceptance, cause the application as accepted to be advertised in the prescribed manner, and the advertisement shall set forth all conditions and limitations subject to which the application has been accepted:
Provided that the Registrar may cause an application to be advertised before acceptance if it is made under paragraph (e) of subsection (1) of section 11, or in another case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted but shall not be bound so to do. - (2)
- Any person may, within the prescribed time from the date of the advertisement of an application, give notice to the Registrar of opposition to the registration.
- (3)
- The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.
- (4)
- The Registrar shall send a copy of the notice to the applicant, and within the prescribed time after receipt thereof the applicant shall send to the Registrar, in the prescribed manner, a counter -statement of the ground on which he relies for his application, and, if he does not do so, he shall be deemed to have abandoned his application.
- (5)
- If the applicant sends such a counter-statement as aforesaid, the Registrar shall furnish a copy thereof to the persons giving notice of opposition, and shall, after hearing the parties, if so required, and considering the evidence, decide whether, and subject to what conditions or limitations if any, registration is to be permitted.
(6) The decision of the Registrar shall be subject to recourse to the Court.
- (7)
- A recourse under this section shall be made in the prescribed manner, and on the recourse the Court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions or limitations, if any, registration is to be permitted.
- (8)
- On the hearing of a recourse under this section any party may, either in the manner prescribed or by special leave of the Court, bring forward further material for the consideration of the Court.
- (9)
- On a recourse under this section no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar, other than those so stated as aforesaid by the opponent, except by leave of the Court. Where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed.
- (10)
- On a recourse under this section the Court may, after hearing the Registrar, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity thereof, but in any such case the trade mark as so modified shall be advertised in the prescribed manner before being registered.
- (11)
- If a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such a notice, or an applicant in a recourse, neither resides nor carries on business in Cyprus, the Registrar or the Court, as the case may be, may require him to give security for costs of the proceedings before them relative to the opposition or to the recourse as the case may be, and in default of such security being duly given may treat the opposition or application, or the appeal, as the case may be as abandoned.
21. Registration.
(1) When an application for registration of a trade mark in Part A or in Part B of the register has
been accepted, and either — - (a)
- the application has not been opposed and the time for notice of opposition has expired; or
- (b)
- the application has been opposed and the registration has been decided in favour of the
applicant, the Registrar shall, unless the application has been accepted in error or unless the court otherwise directs, register the trade mark in Part A or Part B, as the case may be, and the trade mark, when registered, shall be registered as of the date of the application for registration, and that date shall be deemed for the purposes of this Law to be the date of registration.
1. Short title
2. Interpretation
The register Rectification and correction of the register
classification of goods or services Rules and fees FIRST SCHEDULE (In accordance with Section 37A)
CERTIFYING TRADE MARKS
SECOND SCHEDULE (In accordance with Section 59)
ASSIGNMENTS AND TRANSMISSIONS (BEFORE APPOINTED DAY) WHICH GIVE EXCLUSIVE RIGHTS IN DIFFERENT PLACES IN CYPRUS
SAVING AS TO THE RETROSPECTIVITY OF PROVISIONS WHICH RELATE TO ASSIGNMENTS AND TRANSMISSIONS
ASSOCIATION OF TRADE MARKS WHICH CAN BE ASSIGNED OR TRANSMITTED AS A WHOLE ONLY
PREVIOUS USE OF TRADE MARK BY A PERSON WHO BECOMES USE OF TRADE MARK FOR EXPORT TRADE BEFORE APPOINTED DAY
-------- ***** -------
TRADE MARK LAW
Cap. 268 63 of 62 69 of 71 206 of 90
1. This Law may be cited as the Trade Marks Law.
2. Interpretation
(1) In this Law, unless the context otherwise requires, the following expressions have the meanings
hereby assigned to them respectively, that is to say — “the appointed day” means the date of the commencement of this Law, “the assignment” means assignment by act of the parties concerned,
14 of 1960 50 of 1962 11 of 1963 8 of 1969 40 of 1970 58 of 1978 1 of 1980 35 of 1982 29 of 1983 *
“the Court” means the competent District Court except for the recourse under Article 146 of the Constitution which is exercised before the Supreme Court.
“limitations” means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold, or otherwise traded in, in any place within Cyprus or as to use in relation to goods to be exported to any market outside Cyprus,
“mark” includes a device, brand, heading, label, ticket, name signature, word, letter, numeral, or any combination thereof, “permitted use” has the meaning assigned to it by subsection (1) of section 29, “prescribed”, means, in relation to proceedings before the Court, prescribed by Rules of Court, and, in other cases prescribed by this Law or any rules made thereunder, “the register” means the register of trade marks kept under this Law, “registered trade mark” means a trade mark that is actually on the register,
* See the Table to the Courts of Justice (Amendment) Law 29/83.
“registered user” means a person who is for the time being registered as such under section 29, “the Registrar” means the Registrar and Official Receiver and includes any other person appointed by the Council of Ministers to exercise all or any of the powers and perform all or any of the duties of a Registrar, “rules” means rules made by the Council of Ministers under section 37 or section 38,
2 of N.69/71 2(a) of N.206/90
“trade mark” means except as regards certifying trade mark, a mark used or proposed to be used in relation to goods or services for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods or services and some person having the right either as proprietors or as registered user to use the mark, whether with or without any indication of the identity of that person,
“transmission” means transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer not being assignment.
2(b) of N.206/90
(2) References in this Law to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references, therein to the use of a mark in relation to goods or services shall be construed as references to the use thereof upon, or in physical or other relation to, goods.
3. The register of trade marks. (4) The register shall be kept under the control and management of the Registrar.
4. Effect of registration and the action for infringement. No action for infringement of unregistered trade mark.
No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark, but nothing in this Law shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
3 of N.206/90
5. Registration to be in respect of particular goods or services. and any question arising as to the class within which any goods or services fall shall be determined by the 4(a) of N.206/90
6. Right given by registration in Part A, and infringement thereof.
(1) Subject to the provisions of this section, and of sections 9 and 10, the registration (whether before or after the commencement of this Law) of a person in Part A of the register as proprietor of a trade mark in respect of any goods or services shall if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods or services and, without prejudice to the generality of the foregoing words that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade, in relation to any goods or services in respect of which it is registered, and in such manner as to render
the use of the mark likely to be taken either — 4(b) of N.206/90 5 of N.206/90
7. Right given by registration in Part B and infringement thereof. 8. Infringement by breach of certain restrictions.
(1) Where, by a contract in writing made with the proprietor or a registered user of a registered trade mark, a purchaser or owner of goods enters into an obligation to the effect that he will not do, in relation to the goods, an act to which this section applies, any person who, being the owner for the time being of the goods and having notice of the obligation, does that act, or authorizes it to be done, in relation to the goods, in the course of trade or with a view to any dealing there with in the course of trade, shall be deemed thereby to infringe the right to the use of the trade mark given by the registration thereof, unless that person became the owner of the goods by purchase for money or money’s worth in good faith before receiving notice of the obligation or by virtue of a title derived through another who so became the owner thereof.
(2) The acts to which this section applies are — (3) In this section references in relation to any goods to the proprietor, to a registered user, and to the registration, of a trade mark shall be construed, respectively, as references to the proprietor in whose name the trade mark is registered, to a registered user who is registered, and to the registration of the trade mark, in respect of those expression “upon” includes in relation to reference to physical relation thereto.
6 of N.206/90
9. Saving for vested rights. Nothing in this Law shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in
relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior— in the name of the proprietor or a predecessor in title of his, whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods or services under subsection (2) of section 14.
7 of N.206/90
10. Saving for use of name, address, or description of goods or services. No registration of a trade mark shall
interfere with — 2 of N.63/62
8 of N.206/90
11. Registrability and validity of registration. Distinctiveness requisite for registration in Part A.
(1) In order for a trade mark to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars — services, and not being according to its ordinary signification a geographical name or a surname.
(e) any other distinctive mark, but a name, signature or word or words, other than such as fall within the descriptions in the foregoing paragraphs (a), (b), (c) and (d), shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness. 2 of N.63/62
9 of N.206/90
12. Capability of distinguishing requisite for registration in Part B.
(1) In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods or services in respect of which it is registered or proposed to be registered, of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in the case of which no such connection subsists either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(2) In determining whether a trade mark is capable of distinguishing as aforesaid the Registrar may
have regard to the extent to which — (3) A trade mark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trade mark or any part or parts thereof. 15. Registration in Part A to be conclusive as to validity after seven years. 16. Registration subject to disclaimer. If a trade mark — (II) that the proprietor shall make such other disclaimer as the Registrar or the Court may
consider necessary for the purpose of defining his rights under the registration: 11 of N.206/90
17. Words used as name or description of an article or substance or services.
(1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use, after the date of the registration, of a word or words which the trade mark contains, or of which it consists, as the name or description of an article or substance or services:
Provided that, if it is proved either — (2) Where the facts mentioned in paragraph (a) or (b) of the proviso to subsection (1) are proved with respect to any word or words, then — (II) if the trade mark contains that word or those words and other matter, all such rights of
the proprietor to the exclusive use of that word or those words in such relation as aforesaid, shall be deemed to have ceased on the date at which the use mentioned in paragraph (a) of the proviso to the foregoing subsection first became well known and established, or at the expiration of the period of two years mentioned in paragraph (b) of that proviso.
(3) No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration in force at the commencement of this Law or thereafter shall, notwithstanding anything in section 15, be deemed for the purposes of section 33 to be an entry made in the register without sufficient cause, or an entry wrongly remaining on the register, as the circumstances may require:
Provided that the foregoing provisions of this subsection shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.
18. Effect of limitation as to colour, and of absence thereof. A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by the Registrar or the Court, as the case may be, having to decide on the distinctive character of the trade mark.
If and so far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.
Procedure of, and duration of, registration.
19. Application for registration. 20. Opposition to registration.
(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon may be after acceptance, cause the application as accepted to be advertised in the prescribed manner, and the advertisement shall set forth all conditions and limitations subject to which the application has been accepted:
Provided that the Registrar may cause an application to be advertised before acceptance if it is made under paragraph (e) of subsection (1) of section 11, or in another case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted but shall not be bound so to do. 21. Registration.
(1) When an application for registration of a trade mark in Part A or in Part B of the register has
been accepted, and either — applicant, the Registrar shall, unless the application has been accepted in error or unless the court otherwise directs, register the trade mark in Part A or Part B, as the case may be, and the trade mark, when registered, shall be registered as of the date of the application for registration, and that date shall be deemed for the purposes of this Law to be the date of registration. DEFINITIONS
REGISTRATION, INFRINGEMENT AND OTHER SUBSTANTIVE PROVISIONS
37A Certifying trade marks – First Schedule
GENERAL AND MISCELLANEOUS
REGISTERED USER AFTER AN APPLICATION WHICH IS SUBMITTED
WITHIN ONE YEAR OF APPOINTED DAY
Short Title
DEFINITIONS
REGISTRATION, INFRINGEMENT AND OTHER
SUBSTANTIVE PROVISIONS
The Register
A trade mark must be registered in respect of particular goods or services or classes of goods or services,
Registrar, whose decision shall be final.
(a) the name of a company, individual, or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) an invented word or invented words; (d) a word or words having no direct reference to the character or quality of the goods or
Provided that no disclaimer on the register shall affect any rights of the proprietor of a trade
mark except such as arise out of the registration of the trade mark in respect of which the
disclaimer is made.