A trade mark is one of the most valuable assets of a business since it is the way that customers identify and distinguish a product/service and that is why it is important to register such trademarks. A trade mark may be registered nationally but also in Europe and/or internationally.
Community Trade Marks (CTM)
If you trade in one country of the European Union you can register your trade mark, as a CTM, at a national office and get protection for your brand and all the value it entails. In one single registration a CTM gives the owner protection for all the 28 Member States of the European Union.
CTMs are registered at the Office for Harmonization in the Internal Market (OHIM). The trademark application is filed with OHIM together with an Authorisation form. After the filing of these forms, OHIM examines whether the goods or services have been given their correct classification and whether the nature of them has been indicated, considers whether the required formalities have been satisfied (signature, languages, etc.) and whether the trade mark is distinctive but not descriptive (“examination period”). If there is no objection by the OHIM- that will be notified to the Applicant/Authorized Representative, which is usually a lawyer- the trade mark application is translated so that details of it can be published in all the official languages of the European Union. OHIM carries out a search in the CTM database for identical and/or similar marks and the results are notified to the applicant before OHIM publishes the trade mark application.
After the publication of the trade mark application, third parties may object to such trade mark registration within 3 months (“opposition period”). On the other hand, if nobody files an opposition or any third party observations within the specified time-frame, the trade mark will be registered and such registration will be published. Such registration will have to be renewed every 10 years.
International Trade Marks
Madrid Agreement and Madrid Protocol govern the system of international registration of trade marks. The system is administered by the International Bureau of WIPO, as a specialized agency of the United Nations.
This system can be used by any natural or legal person that has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol. Since Cyprus is a member of both the Madrid Agreement and Protocol, anyone that has a registered national Trade mark in Cyprus (registered by the Trademark Office of Cyprus) can apply for its registration to all country members of the Madrid Protocol. An applicant would need to file an international application with the Trademark Office of Cyprus that will be forwarded directly to WIPO by the said Office. The application needs to be filed either in English, French or Spanish.
WIPO will examine whether the international application complies with the requirements of the Agreement or Protocol and the Common Regulations (indication of goods and services, classification, fees, etc.). Any irregularities will become known to the Trademark Office of Cyprus and the applicant through its Authorised Representative, who is usually a law firm based in Cyprus. The irregularities must be remedied within three months, otherwise an application will be considered abandoned. If no irregularity is found, the mark is recorded in the International Register and is published in the Gazette. WIPO will then inform all the National Offices in which protection has been requested.
Each National Office, to which a copy of the registration has been sent by WIPO, has the opportunity to decide whether or not the mark can be registered in that national state. A provisional refusal may be sent to WIPO and the applicant will be notified by the latter. The applicant has to decide whether he will abandon the application in that national state or whether he will defend the registration, without the involvement of WIPO. As in the case of registration of trade mark in Europe, the registration will have to be renewed every 10 years.
The registration of a trade mark, either in Europe or internationally, is an effective way to secure businesses’ most valuable asset (trade mark) by obtaining the best protection.