Filing an opposition to register a trademark in Cyprus and the new procedure under the amended Trademarks Act

Antonis C Constantinou

Michaelidou & Constantinou, Nicosia

constantinou.a@cymclawyers.com

The Cyprus Trademarks Act Cap. 268 was enacted during the era of the Colonial Government of Cyprus, when Cyprus was a Colony of the British Crown.^[1]

The Cyprus Trademarks Act was modeled under the British Trademarks Act of 1938^[2] and, although it has been amended five times^[3] since 1951, those amendments have been mostly minor with exception to the amendments that took place in 2000^[4] and 2006^[5].

On 12 June 2020, the Trademarks Act was heavily amended by Act 63(I)/2020).^[6] Although it is still called ‘The Trademarks Act Cap 268’, the amended act can be perceived as a totally new act, given its radical amendments to several fundamental trademark matters.

One of the main fundamental changes was to the opposition procedure, which was modelled under the British Trademarks Act 1938^[7] and the statutory instrument that followed (the Trademark Rules of 1951). ^[8]

To give effect to the new procedure, the legislature had to enact new Trademark Rules. The new Rules were enacted on 16 June 2022 as the Trademark Rules of 2020.^[9] The Trademark Rules of 2020 repealed the Trademark Rules of 1951.

Under the new Trademarks Rules, the opposition procedure followed by the Cyprus National Trademark Office has been changed. The old procedure was modelled under the Colonial British Trademarks Act of 1938 while the new procedure is modelled under the procedures followed by the European Union Intellectual Property Office (EUIPO) for European Trademarks. Besides the introduction of a new procedure the new law has inserted the element of a cooling-off period and encourages parties to seek an amicable solution in the dispute. Moreover, the element of the request of statement of use has been introduced in line with the Regulation 1001/2017.^[10]

Once the Registrar examines the application to register a new trademark and approves it, the Registrar publishes its intention to register the trademark on the website of the Registry, giving third parties have a period of three months^[11] from the date of publication in order to file an opposition.

The current procedure is as follows:^[12]

1. The opponent files a notice of opposition.
2. The Registrar notifies the applicant that an opposition has been filed and provides the applicant with the particulars.
3. The parties have a two-month cooling-off period in order to seek an amicable solution.
4. If no settlement is reached within the two-month cooling-off period the opponent must file their evidence and legal statement within a period of two months.
5. The applicant, within two months, should file their observations to the opposition and to request proof of use if the previous trademarks are older than five years. The applicant can choose to request proof of use and to withhold their right to file further observations after the filing of the proof of use.^[13] The observations of the applicant contains, evidences by an affidavit and legal statement.
6. The opponent should file evidence of use together with their legal statement regarding use within two months. If the applicant also filed their observations together with the request to prove use, the opponent should also file evidence against the observations and cover the matter of observations with their legal statement.
7. If the applicant chooses to file their observations at a later stage and not together with the evidence of use, the Registrar will give directions on the deadlines to order the applicant to file their observations and supportive statement, and for the opponent to file their evidence and statement in reply of these observations.
8. Once the opponent files their last evidence and statement, the case is closed and the Registrar will issue a decision.

In contrast the procedure under the previous law was as follows:

1. The opponent filed a notice of opposition.
2. Once the Registrar received an opposition, they notified the applicant accordingly.
3. The applicant had to file their reply within the time limit provided in the Registrar’s notice.
4. Once the Registrar received the applicant’s reply, they notified the opponent accordingly and provided deadlines to both parties in order to file their evidence.
5. The applicant had to file their evidence within the time limit provided in the Registrar’s notice, and also serve the evidence to the opponent.
6. The opponent had to file their evidence within the time limit provided in the Registrar’s notice and serve the evidence to the applicant.
7. The applicant had to file their replying evidence within the time limit provided in the Registrar’s notice, and also serve the evidence to the opponent.
8. The Registrar informed both parties that affidavits have been filed and stated a date for a hearing before them for both parties to present their case.
9. The lawyers of the parties presented their case before the Registrar and the Registrar either decided at that time or stated that the decision is reserved.

Under the previous procedure, the pleadings, the filling of evidence and the legal arguments were separated in three different stages, while under the new procedure, the pleadings, the filling of evidence and the legal arguments take place simultaneously. Although the new procedure could be faster and modern, the old procedure was a safeguard to the proper administration of justice. In a procedure where a witness is unlikely to appear before the Registrar and provide evidence in person, but where evidence is procured via affidavits or appendixes, the ability to manipulate the truth may be easier. On the other hand, when the quasi litigators are presenting their respective case in stages, it is easier for the litigator who states the truth to expose its counterparty. This could be the biggest disadvantage of the new procedure. The main advantage of the new procedure is that it is modelled under the procedure modelled by EUIPO and Cyprus lawyers who handle trademark oppositions will not be required to practice in two totally different procedures.

 In conclusion, it is with some certainty that lawyers will find the harmonisation with Regulation 1001/2017 of importance. However, some lawyers will miss the advantages of the old procedure.

Notes

^[1]       With regards to the Colonial Government of Cyprus, see Halsbury Laws of England, 3rd Edn, Butterworth & Co (Publishers) Ltd, 1953, Vol 5, p 633.

^[2]       Trade Marks Act 1938 [1 & 2 GEO 6. Ch 22].

^[3]       Ο περί Εμπορικών Σημάτων (Τροποποιητικός) Νόμος του 1962 (Ν. 63/1962) Ε.Ε., Παρ.Ι(Ι), Αρ.187, 27/9/1962.

Ο περί Εμπορικών Σημάτων (Τροποποιητικός) Νόμος του 1971 (Ν. 69/1971) Ε.Ε., Παρ.Ι, Αρ.910, 10/12/1971

Ο περί Εμπορικών Σημάτων (Τροποποιητικός) Νόμος του 1990 (Ν. 206/1990) Ε.Ε., Παρ.Ι, Αρ.2551, 9/11/1990

Ο περί Εμπορικών Σημάτων (Τροποποιητικός) Νόμος του 2000 (Ν. 176(I)/2000) Ε.Ε., Παρ.Ι(I), Αρ.3459, 29/12/2000

Ο περί Εμπορικών Σημάτων (Τροποποιητικός) Νόμος του 2006 (Ν. 121(I)/2006) Ε.Ε., Παρ.Ι(I), Αρ.4089, 28/7/2006.

^[4]       The amendment of 2000 harmonised the Cyprus Trademarks law with the Regulation 40/94. The most important amendment was the introduction of articles 7, 8 and 9 of the Regulation into the Cyprus Trademarks Act.

^[5]       The amendment of 2006 introduced the disclosure of information.

^[6]       Ο περί Εμπορικών Σημάτων (Τροποποιητικός) Νόμος του 2020 (Ν. 63(I)/2020).

^[7]       The Statutory Rules and Orders 1938 (SI 1938/661) (the Trademark Rules of 1938).

^[8]       The Rules were published in Supplement 3 of the Cyprus Gazette, No 3583 of 30 October 1951.

^[9]       The Trademark Rules of 2020 Κ.Δ.Π. 259/2020. The Rules were published in the Third Part of the Cyprus Official Gazette of 16 June 2020.

^[10]       Regulation (EU) 2017/1001 of the European Parliament and of the Council, OJ L 154, 16.6.2017.

^[11]     Trademarks Act Cap 268, art 28(1).

^[12]     The procedure is stipulated in the Trademark Rules 2020, arts 14–29.

^[13]     Proof of use is stipulated in the Trademarks Act Cap 268, arts 30(7) and (8).