News & Insights

Trademarks: Protecting Your Brand Identity

What exactly is a trademark? A trademark can be any word, phrase, symbol, design, or a combination of these elements that uniquely identifies your goods or services and signifies your company’s ownership of a brand. In Cyprus, according to Article 4 of The Trademarks Law (CHAP.268), the scope extends even further to include the shape of a product, its packaging, or distinct sounds. The key is that these signs must be capable of distinguishing your products or services from those of other businesses. For legal protection, they must also be clearly and precisely represented in the Register, allowing authorities and the public to determine the exact scope of protection granted.

Securing your trademark rights is a critical step for any business. You can proceed with trademark registration in various jurisdictions: nationally in Cyprus, across the entire European Union, separately in the United Kingdom, and internationally through WIPO. Each process is essential for establishing legal ownership and protecting your brand.

Benefits of Trademark Registration

Registering your trademark offers significant advantages. It grants you exclusive legal rights to use your mark in connection with the goods and services for which it’s registered, providing a strong legal basis to prevent others from using similar marks that could confuse consumers. A registered trademark enhances your brand’s value, makes it easier to license or sell your brand, and serves as a powerful deterrent against potential infringers. Essentially, it’s an investment in your brand’s future and security.

The Nice Classification System

Before delving into the specific registration processes, it’s important to understand the Nice Classification (NCL) system. This is an international standard used to categorize goods and services for trademark registration purposes. It divides goods into 34 classes and services into 11 classes. When applying for a trademark, selecting the correct classes is crucial as it defines the precise scope of your protection.

Registration of a Trademark in Cyprus (National Trademark):

1. Before submitting your application, it is highly advisable to conduct a comprehensive online search through available trademark databases. This step is crucial to ensure your proposed mark does not infringe upon existing rights and to assess its registrability. The application itself is then submitted either electronically via the Cyprus IP Portal or manually at the Registrar’s office. It must include the applicant’s details, a clear representation of the mark, a list of goods/services classified under the Nice Classification system, a declaration of use or intention to use the mark, and payment of the official filing fee.
2. The Registrar of Companies and Intellectual Property Department examines the application for formal and substantive compliance with the Trademarks Law (CAP. 268). This includes checking for absolute grounds (e.g., whether the mark is descriptive, misleading, or non-distinctive). Relative grounds are generally not examined automatically by the Registrar; however, if the mark passes examination, it is published in the Official Gazette of the Republic of Cyprus. This initiates a two-month opposition period, during which any third party can file an opposition based on earlier registered or unregistered rights. If an opposition is filed, both parties may submit arguments, and the Registrar may hold a hearing.
3. If no opposition is filed within the designated period, or if any opposition is successfully rejected, the trademark proceeds to registration. The Certificate of Registration is issued, and the mark is formally entered into the Trademark Register. A national trademark in Cyprus is valid for seven (7) years from its filing date and can be renewed indefinitely for consecutive periods of fourteen (14) years (with a six-month grace period for late renewal upon surcharge). Upon registration, the owner obtains exclusive rights to use the trademark in Cyprus, the right to initiate legal action against infringement, the ability to license or assign the trademark, and the option to record it with Customs for border enforcement against counterfeit goods.

Registration of a Trademark in EUIPO (European Union Intellectual Property Office):

1. Conducting a thorough preliminary search is a fundamental first step in any trademark registration process, such as the e-Search Plus tool to determine whether your proposed trademark has already been registered. While the EUIPO does not examine prior registrations as part of the application process, the existence of an identical or similar mark won’t automatically lead to your application’s rejection. Instead, it is the responsibility of an earlier trademark holder to file an opposition if they believe your application infringes upon their rights.
2. If no immediate issues arise following your preliminary search, you can proceed with submitting your application online via your EUIPO account. The process can be initiated through the EUTM Easy Filing system, which guides you step-by-step through completing all necessary information, including the selection of classes, the representation of your trademark, and other required details.
3. Once your application is complete and confirmed by the EUIPO, the trademark is published. This publication marks the beginning of a three-month opposition period, during which third parties may file an objection if they believe your trademark conflicts with their prior rights. If no oppositions are filed within this period—or if any objections are successfully resolved—your trademark will proceed to registration.
4. An EU trademark (EUTM) is registered for a period of 10 years from the filing date and can be renewed indefinitely for further 10-year periods, providing protection across all current and future EU member states.

Registration of a Trademark through WIPO (World Intellectual Property Organization) :

1. Before submitting an international trademark application through WIPO, it’s advisable to conduct a preliminary search to check whether your mark—or a similar one—is already registered or pending in the countries where protection is sought. While WIPO primarily conducts formalities checks, some designated offices in member countries may conduct relative grounds examinations (e.g., conflicts with earlier rights) after the international registration is transmitted to them. Conducting a prior search can significantly reduce the risk of refusal at the national or regional level.
2. To file an international application, you must first have a basic trademark application or registration (known as the “basic mark”) in a WIPO member country through its national or regional office (the “Office of origin”). Once this is in place, the international application is submitted through the Office of origin to WIPO, using Form MM2 or the online Madrid e-Filing system, and designating one or more member countries (Contracting Parties) where you seek protection.
3. Upon receipt, WIPO conducts only a formalities check, verifying that the application is complete and meets procedural requirements. If approved, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO then notifies each designated country, whose respective IP Offices will examine the application according to their national laws. Each Office typically has up to 12 or 18 months to issue a provisional refusal, if applicable. If no refusal is issued within the applicable time limit, protection is deemed granted in that jurisdiction as if the mark had been registered directly with that national office.
4. An international registration under the Madrid System lasts for 10 years and can be renewed indefinitely for further 10-year periods, offering a cost-effective way to manage trademark protection in multiple countries.

Registration of a Trademark in the United Kingdom Intellectual Property (UK IPO)

1. Before submitting a trademark application in the United Kingdom, it’s advisable to conduct a preliminary search using the online UK IPO Trade Mark Search tool to determine whether your proposed trademark—or a similar one—has already been registered. While the UK IPO does carry out a search for earlier marks during the examination process, conducting your own search in advance helps assess the likelihood of objections or opposition.
2. If no significant conflicts are identified, you can proceed with filing your trademark application online through the UK IPO’s official portal. The application requires you to provide details such as the applicant’s name and address, a clear representation of the trademark, a list of the goods and/or services classified under the Nice Classification system, and the applicable fee. Once submitted, the UK IPO will issue an acknowledgment of receipt.
3. The UK IPO examines the application for both absolute grounds (e.g., whether the mark is distinctive or descriptive) and relative grounds (i.e., conflict with earlier trademarks). If any objections arise, you will be notified and given the opportunity to respond or amend your application. If the application passes examination, it will be published in the UK Trade Marks Journal.
4. Following publication, there is a two-month opposition period (extendable by one additional month upon request) during which third parties may oppose the registration based on earlier rights. If no oppositions are filed—or if any oppositions are resolved in your favor—the trademark will be registered, and you will receive a registration certificate. The mark will then be protected for 10 years, renewable indefinitely in 10-year increments.

Secure Your Brand’s Future

Understanding the various avenues for trademark protection—from national to international—is paramount for strategically securing your brand’s unique identity and assets.

For further information on this topic please contact AMG Mylonas & Associates, LLC by telephone +357 25 101080 or by e-mail [email protected]

Disclaimer

This publication has been prepared only as a general guide and for information purposes. It does not constitute or should not be read as a legal advice. One must not rely on it without receiving independent advice based on the particular facts of his/her own case. No responsibility can be accepted by the authors or the publishers for any loss occasioned by acting or refraining from acting on the basis of this publication.