All about Trademarks Terms , Provisions and Rights
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Introduction
This booklet is intended to provide an introduction for non-specialists or new-comers to the subject of trademarks. It explains the fundamental principles of trademark law and practice. It describes the main conditions to protect a logo as a trademark, the different routes of registration, as well as the limitations on those rights. And finally it briefly covers transfer of trademarks and the rights of a trademark holder.
Detailed legal or administrative guidance on how, for example, to deal with infringement of trademark, is not covered in this booklet.
Š 2015 Ioannides, Cleanthous & Co LLC World Intellectual Property Organisation (WIPO) Office for Harmonisation in the Internal Market (OHIM) 2 www.ipcyprus.com
What is a trademark?
A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. In practice it means that a trademark is the symbol the customers use to pick out a product or service. It distinguishes a brand from its competitors. You can protect and build upon your trademark if you register it. In some countries, you can also get protection even if your trademark is not registered, as long as it is used. However, you are well advised to register it in order to obtain the best protection.
The only condition imposed on a registered trade mark is that it must be clearly defined; otherwise neither you nor your competitors will be certain of what it covers.
First trademarks
Trade marks have been with us for a long time. Minoan stirrup jar with an octopus trademark from Cyprus; 13001200 B.C.
Š Trustees of the British Museum
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What kinds of trademark can be registered? A word or a combination of words, letters, and numerals can perfectly constitute a trademark. But trademarks may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or colour shades used as distinguishing features – the possibilities are almost limitless.
In Cyprus you can register: Word mark A word mark is represented using words, letters, numbers or any other characters that can be typed.
ADIDAS
MITSUBISHI
HILTON
Figurative mark A figurative mark is represented using pictures, graphics or images.
Figurative mark with letters A figurative mark containing letters combines the use of pictures, graphics or images with words or letters.
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How can I protect my trademark?
Cyprus (National Application) At the national level, trademark protection can be obtained through registration, by filing an application for registration with the Registrar of Trademarks and paying the required fees.
EU (CTM Application) If you do business in more than one EU country, a Community trade mark (CTM) offers you protection throughout the EU. CTMs are registered at the Office for Harmonization in the Internal Market (OHIM). A CTM gives the owner protection for all EU Member States in one single registration. The CTM is an all-or-nothing deal: either you get it for all Member States or you do not get a CTM at all.
International (Madrid System) At the international level, you have two options: either you can file a trademark application with the trademark office of each country in which you are seeking protection, or you can use WIPO’s Madrid System.
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What rights does trademark registration provide?
In principle, a trademark registration will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner, or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the right holder, for example, in case of litigation.
Benefits of registering a trademark
Protects your brand value
Builds an asset
Defends against rival marks
Defines your rights
Prevents counterfeiting and fraud
How long does protection last?
trademark
The term of trademark registration can vary. In Cyprus is 7 years, in the EU is ten years. It can be renewed indefinitely on payment of additional fees. Trademark rights are private rights and protection is enforced through court orders.
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Trademarks once registered
Using your trademark There are no rights without obligations. The right that has been granted to you is a powerful tool that can be used to help you build brand recognition in the market. However, the monopoly you hold should serve a purpose or it may be removed. The purpose of your trademark is to distinguish your goods and/or services from those of your competitors in the market. Therefore, your trademark must be put to use. If you don't use it, third parties can challenge your trademark for non-use. The law establishes that a Trademark must be put to genuine use in Cyprus in the five years following its registration, and that this use must not be interrupted for over five years.
Defending your trademark
The fact that you own a trademark does not mean that third parties will stop challenging it. In fact, third parties who have failed to observe the time limits for filing observations or an opposition are given a second chance in which they can try to obtain the cancellation of your right. You may think this is a bit unfair, but if the tables were turned, you might see it differently: imagine you had failed to observe the time limit for filing an opposition against one of your competitors' trademarks. The filing of a cancellation action triggers the start of a procedure in which an exchange of arguments between the parties involved takes place. Eventually, if no agreement is reached, we will make a decision.
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The market
Ensure nobody uses your trade mark in the market. Monitor the marketplace by checking the press, trade publications and the web for companies using your trademark without authorisation. It may be that illegal copies of your products are on sale or that competitors are using marks that are similar, but not identical, to your trademark. In both cases you are entitled to enforce your rights.
Remember, illegal use of your mark can be both on physical goods of the type that you produce and on related websites used to promote sales.
Consider making an application for infringement protection with Cyprus customs authority. Border control officers use these databases to highlight potential infringements and seize counterfeit goods.
If you find irregularities in the market, online, or at Cyprus border agencies we strongly recommend you to first seek legal advice.
It's up to you to take action!
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Developing your brand
Your Intellectual Property (IP) strategy will evolve over the years and with it your need to expand. If your ambitions extend beyond Cyprus, you should seek an extension of your trademark in the EU or internationally.
There are various options for doing this. You can either file applications directly for a Community Trademark (CTM) or you can file via the Madrid protocol, an international registration system.
A trademark registration lasts for 7 years but can be renewed indefinitely. After the first 7 years of the registration you will be faced with the question: do I want to renew my trade mark? The answer depends on your brand strategy.
Let us know if your details change e.g. your name or that of your company, address or contact details.
Why? As we are appointed as your representatives, it is important to know your correct contact information in case to keep you posted of any developments and for any correspondence from the Registrar. It is in your interest to keep the details concerning your business up to date. We, or a third party, may need to contact you. When?
There is no official time limit. The sooner you make us aware of any changes the better. Changes to personal details must not affect the applicant's/owner's identity. A change in the applicant's identity is called a transfer.
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Can I sell or lease my Trademark? Your trademark is an asset. Ownership can be licensed or sold. The main difference between these options is that when you transfer your Trademark you transfer ownership to another party permanently, whereas when you license it you retain ownership. It's like selling or renting your house. As soon as an agreement has been reached, you should let us know the details.
When? As soon as an agreement has been reached between you and another party, let us know.
How? All you need to do is to send us the details of the parties and to send us the deed of transfer or license agreement signed by you and the
Cyprus “IP Box”: The most attractive tax for your trademark in the EU!
Cyprus, as a country member of the EU and contracting member of the main intellectual property law organisations and treaties grants full protection to all the main intellectual property rights. The beneficial “IP Box” regime introduced in Cyprus in 2012 is one of the most attractive tax environments for intellectual property rights in the EU as it specifically provides the following: • 80% of worldwide royalty income generated from IP owned by Cypriot resident companies, net of any direct expenses is exempt from income tax • 80% of profit generated from the disposal of IP owned by Cypriot resident companies, net of any direct expenses is exempt from income tax • any expenditure of a capital nature for the acquisition or development of IP is claimed as a tax deduction in the year in which it was incurred and the immediate four following years on a straightline. Cyprus’ advantage as a business centre is reconfirmed not only because of the introduction of the IP Box, but also because of the attractive 12,5% Cyprus company tax rate and the extensive network of double tax treaties ratified by Cyprus. Trademark owners , using Cyprus as the basis for their business can receive unquestionable tax savings!
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Do you need to know more? Just send us an email to info@ipcyprus.com
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