This country-specific Q&A provides an overview to intellectual property law in Cyprus.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
Patents, Supplementary protection certificates, Rights in trade secrets and confidential information, Trade marks, Trade names, Cause of action in passing off, Rights to prevent unfair competition, Certification marks, Designations of origin, Geographical indications, Semiconductor topography rights, Plant varieties, Copyrights, Industrial Designs and Domain names.
A patent is the legal instrument provided nationally, on a European level or on international level for the protection of inventions. An invention can be registered as a patent in Cyprus if it is novel (new), it involves an inventive step and it is industrially applicable. Although an invention may occur in any field, the patent law restricts the areas in which patents can be granted. Discoveries, scientific theories and mathematical methods, aesthetic creations, schemes, rules and methods of preforming mental acts, playing games or doing business, computer programs, presentation of information and animal varieties are excluded from patentability. Moreover, inventions whose exploitation is considered as contrary to public order or morality cannot be registered. The protection of utility models in not possible in Cyprus.
Supplementary protection certificates
Supplementary protection certificates (SPCs) can be issued for inventions registered as patents and having marketing authorisation as pharmaceutical products to extend the term of patent protection for an invention related to pharmaceutical products by up to five years in qualifying circumstances. The SPC confers the same rights as the basic patent.
Trade secrets and confidential information
There is no specific legislation governing the protection of trade secrets and confidential information but there are several different laws that mention them. Trade secrets and confidential information can be protected under the contract law.
A trade mark must be able to be represented graphically and distinguish goods and/or services of one undertaking from those of other undertakings. Except from the requirement to have distinctive character, a trade mark must not be similar to any other already registered trade mark and must not confuse the public. Words (including personal names), logos, symbols, letters, numerals, designs, images, shape of goods or their packaging, non-conventional marks (namely colours, sounds and smells) or any combination thereof can be registered as trade marks.
A trade name (or business name or trading name) can be registered under the provisions of the Partnerships and Business Names Law, Cap 116.
The owner of registered or not registered trade marks is entitled to file an action against someone who uses his trade mark without his permission, using the common law of passing off.
Legislation is established for the protection of competition and unfair competition practices are forbidden by the law.
Signs or indications which designate the geographical origin, material, mode of manufacture, quality, accuracy or other characteristics of goods and/or services can be registered but a certification mark may not be registered if the public may be misled with regard to the character or significance of a mark, in particular if it is likely to be taken to be something other than a certification mark, and for that reason the Registrar may require the mark to indicate that it is a certification mark.
Designations of origin, Geographical indications and Plant varieties
Designations of origin and Geographical indications are protected under the Appellation of Origin and Geographical Indications for Agricultural Products and Foodstuffs Act 2006 and plant varieties are protected by the Protection of New Varieties of Plants Act 2004.
Semiconductor products are not patentable in Cyprus but can be protected under the Legal Protection of Topographies of Semiconductor Products Law No. 5(I)/2002 which follows the Council Directive 87/54/EEC of 16 December 1986 on the legal protection of topographies of semiconductor products.
A copyright is the statutory right to stop others from copying or exploiting in any other way original work without permission from the owner of such right. Scientific works, literary works, musical works, artistic works, cinematography, databases, sound recordings, radio and television broadcasts and publishing of previously unpublished works can be protected by copyrights.
Patterns for the manufacture of industrial products, shapes of articles applied to other articles and in general work of craftmanship that is appealing to the eye in terms of aesthetics and can be used or sold in industry can be registered as industrial designs. An industrial design can be registered in Cyprus if it is novel and has individual character. Protection of a design may be obtained by the registration of a national industrial design or a Community design extending at once to all countries of the European Union.
The following top level domain names can be registered in Cyprus by the authorized administrator of the CY Top Level Locator (URL), the University of Cyprus: “com.cy”, “gov.cy”, “info.cy”, “ac.cy”, “net.cy”, gov.cy, “org.cy”, “biz.cy”, “pro.cy”, “name.cy”, “ekloges.cy”, “tm.cy”, “ltd.cy”, “press.cy” and “parliament.cy”.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
The duration is twenty years from the filing date subject to the payment of annual renewal fees. No procedure to extend protection is provided except from pharmaceutical; in this case supplementary protection certificate may be issued, as descripted below.
Supplementary protection certificates
The maximum duration of protection may be given is five years. The length of the period of protection offered is calculated in relation to the period for which protection was lost due to authorization process. If the first marketing authorization was granted within five years from the date of filing the patent application, no supplementary protection certificate can be obtained. If the first authorization was granted between five and ten years from the date if filing the patent application, the duration of the certificate may be up to five years, depending on when that authorization was given. If the first authorization was granted between ten and twenty years from the date of filing the patent application, a certificate with a duration of five years may be obtained.
The duration of protection is seven years from the date of registration and at the seven-year period it can be renewed for another fourteen years by paying the required renewal fees. Then, the trade mark can be renewed for further fourteen-year periods this way and can last indefinitely.
In general copyright will be protected for seventy years from the date of the death of the author of the work. In case of films, this period starts from the date of the death of the last of the producer, the primary director, the script writer, the screenplay writer and the composer of any music specially composed for the film.
Design protection lasts for five years from the filing date. After that, design can be renewed for four terms of five years each by paying the relevant fees as the maximum duration of protection is twenty-five years.
Applicants can be granted with one-year license or two-year license by paying the relevant fee. This license is only valid during the license period. Domain names can be renewed annually and indefinitely.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
In general, the first owner of intellectual property rights is the inventor, designer or author (or his successor or joint inventors, designers or authors where applicable); that is to say the first owner is the person that actually created the work.
In case of an invention, design or work made in the course of employment or commission, the right to the work shall belong – in the absence of contractual provisions to the contrary- to the employer or to the person having commissioned the work respectively. However, in case that the work is created by an employee and the work was created outside of the normal duties of the employee's employment, the employee may be the first owner.
In regard to trade marks, the first owner of a registered trade mark is the named applicant.
The owner of a domain name is not the applicant but in accordance to the law, the owner is the Commissioner of Electronic Communications and Postal Regulation. The applicant has only the license to use the domain name for the license period paid for.
Which of the intellectual property rights described above are registered rights?
Patents, SPCs, Trade marks, Certification marks, Designations of Origin and Geographical indications, Plant varieties, Designs and Domain names.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
The inventor or his successor in title or the joint inventors – where applicable – are entitled to apply for patents. Foreigners and nationals of Cyprus can apply for and obtain patents to the same extent.
To register a national patent, the applicant or a lawyer licensed to practise law in Cyprus on behalf of the applicant must file an application to the Registrar of Companies and Official Receiver (hereinafter the Registrar). The application must be written in Greek using a specific form and must be accompanied with an Authorization form as well as the patent text in English and Greek which must have a specific format and include a request for the patent to be granted, the details of applicant, inventor and representative and the title, description, claims, drawings and abstract of the invention.
Following the filing of the application, the applicant is notified that the application complies with all formal requirements and then a search report must be issued by the relevant Authority which is the European Patent Office (EPO). The decision to grant the patent is made and if the grant fee and the publication fee are paid within three months from the notification of the decision, the patent is granted.
To register a European patent designating Cyprus, an application is made to EPO.
Supplementary protection certificates
The owner of the basic patent or his legal successor or assignee can apply for a supplementary protection certificate. The possibility of extension applies both to national patents and to European patents valid in Cyprus.
To obtain a supplementary protection certificate, an application must be filed with the Registrar of Cyprus within six months from the date on which the first marketing authorization as a pharmaceutical product in Cyprus is granted. In case that this authorization is granted before the grant of the basic patent, the certificate must be applied for within six months from the date on which the patent is granted.
Any person, either individual or legal entity, who claims to be the owner of a mark may apply for its registration.
Applications for registration of trade mark are filed with the Registrar. The application must be accompanied with the representation of the trade mark and with an Authorization form in case the application it is filed by a lawyer licensed to practise law in Cyprus on behalf of the applicant. If the formal requirements are met, the trade mark is published on the Official Gazette of the Republic of Cyprus for two months and if no opposition is filed within this period, the registration is completed.
To register a community trade mark, a European application to the European Union Intellectual Property Office (EUIPO) must be filed.
An application for the registration of an industrial design may be filed by:
- Cypriots or citizens of the European Union or persons with customary residence in Cyprus or in a Member State of the European Union
- Companies or other legal entities with a real industrial or commercial establishment in Cyprus or in a Member State of the European Union and
- Persons or companies form outside the European Union with customary residence or a real industrial or commercial establishment in Cyprus or in a Member State of the European Union.
Applications for the registration of designs are filed with the Registrar. The representation by a lawyer is not required for the registration of a design. The Registrar examines if the formal requirements are complied with and issues the certificate of registration.
To register a community design, an application must be filed before the European Union Intellectual Property Office (EUIPO).
.CY domain names can be registered only to companies registered in Cyprus and to permanent residents of Cyprus. Thus, foreigners can register a .CY domain names only by authorizing a local representative. An application in a specific form must be send to University of Cyprus with any supporting document and the fees must be paid.
How long does the registration procedure usually take?
Patents: Twelve to eighteen months from the filing date for the national application and three to eight years from the filing date for an application to EPO.
Supplementary protection certificates: Two to three weeks from the filing date.
Trade marks: Three to four months from the filing date for a national trade mark and three months from the filing date for a Community trade mark, in case no opposition is received.
Designs: Three to four months from the filing date for national designs and three to four weeks from the filing date for Community designs.
Domain names: One to three days from the filing date.
Do third parties have the right to take part in or comment on the registration process?
Third parties have no right to take part on the process of registering designs and domain names but they do have this right in trade mark and patent registration proceedings.
More precisely, any person may, within two months from the date of publication of an application give notice of opposition to the registration to the Registrar. The Registrar sends a copy of the notice of opposition to the applicant who is required to file, in the prescribed manner, a counter – statement of the grounds on which he relies for his application. The Registrar provides a copy of the any counter-statement to the person opposing the registration. After hearing the parties and considering the evidence, the Registrar determines whether and subject to what conditions, if any, registration is granted.
In regards to patents, any person may, within three months from the date of publication of the application of a patent, give notice of opposition to the registration of the patent to the Registrar. The Registrar sends a copy of the notice of opposition to the applicant who has to file a counter – statement stating his grounds against the opposition within three months from the receipt of the copy of the notice of opposition. Then the Registrar sends a copy of the said counter – statement to the opponent and may give instructions at his discretion in relation to the continuation of opposition procedure.
What (if any) steps can the applicant take if registration is refused?
For Patents, SPCs, Trade marks and Designs the applicant can file an appeal against the decision of the Registrar before the Administrative Court of Cyprus.
What are the current application and renewal fees for each of these intellectual property rights?
Application fees are 100.00 Euros and renewal fees are as the table below.
Supplementary protection certificate
Application fees are 100.00 Euros and renewal fees are as the table below.
Application fees are 50.00 Euros for registration of a mark in one class. For each additional class for the same mark is another 50.00 Euros. In case the registration of a trade mark is approved, a fee of the amount of 100.00 Euros is paid for the issue of the certificate for each class.
Renewal fees are 80.00 Euros for one mark in one class. For each additional mark is another 80.00 Euros. The fee includes the issue of the renewal certificate.
Application fees are 85.43 Euros and the renewal fees are as the table below.
The application fees depend on the registration date and renewal fees on the expiration date. The fees are from 8.28 Euros to 15.52 Euros for one-year license registration and for renewal and from 18.62 Euros to 25.87 Euros for two-year license registration.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
For each of the following intellectual property rights, the registration can be renewed either a few months before or a few months after the renewal date. For patents and trade marks there is the option of restoration.
Patents and SPCs
Annual renewal fees must be paid in advance each year during the three months preceding the anniversary of the filing date. Payment may also still be made during a six-month grace period with payment of a surcharge for each month. If annual fees are not paid in due time or within the grace period, the patent will lapse or the application will be deemed to have been withdrawn. The patent or application may be restored upon application by any interested person made within twelve months from the expiration of grace period of paying the annual fee with the payment of annual fee, surcharge and restoration fee.
Renewal fees must be paid during the last three months of the current registration period. If renewal is not affected in time the Registrar publishes to the Official Gazette of Cyprus that the trade mark was not renewed and that it can be renewed up to two months after the date of this publication upon application and payment of the renewal fee and the additional prescribed fee. In case that a trade mark is not renewed on its due date or within two months after the date of publication, there is a six-month grace period following the renewal deadline during which the trade mark registration can still be restored by filing a form and paying the renewal fee together with the additional restoration fee.
Renewal fees must be paid during the last three months before the expiration of a five-year registration period. There is a grace period of six months following the expiration of the registration or renewal period of the design. There is no provision for restoration – if the grace period for payment of renewal fees expires, restoration is not possible.
What are the requirements to assign ownership of each of the intellectual property rights described above?
Patents and SPCs:
- Request for recordal on prescribed form
- Deed of assignment in Greek or with Greek translation, legalized by Notary Public, signed by the assignor and the assignee, mentioning at least the number and date of patent or application, the title and the invention, the names, addresses and nationalities of the assignor and the assignee
- Power of attorney from the assignee
- Payment of the required fee
- Request for recordal on prescribed form
- Original or certified copy of the deed of assignment, legalized by Notary Public, signed by the assignor and the assignee
- Payment of the required fee
Certification marks can only be assigned with the special consent of the Registrar.
For the assignment of a copyright, a written assignment deed between the assignor and the assignee is needed. It is possible to assign a future work.
To assign the right of registration of a design and the rights deriving from a registered design, an assignment must be registered with the Registrar who will request a written assignment deed. A notarized original or certified copy of a Deed of Assignment or any other written document evidencing the assignment must be provided.
Domain names cannot be assigned or transferred; only a transfer of a domain name to another domain name server (DNS) or to other internet service provider is available.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
For Patents (and SPCs), Trade marks, Certification marks and Designs, assignment must be recorded otherwise it is not actioned.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
Patents (and SPCs)
There is no provision for recording of voluntary licenses but it is highly recommended to conduct a license agreement in writing in order to license a third party to use a patent.
There is a provision for grant of a compulsory license under a patent. The law provides that any person at any time after the expiration of four years from the date of grant of a patent can apply to the Registrar on any of the following grounds:
- The patented invention, though capable of being worked commercially in Cyprus, is not so worked or not so worked to the fullest extent being reasonably practicable.
- The patented invention is a product and a demand for that product in Cyprus is not met or not met on reasonable terms.
- By reason of refusal of the owner of the patent to grant a license upon reasonable terms, a market for the export of any patented product made in Cyprus is not being supplied, or the working or efficient working in Cyprus of another patented invention which makes a substantial contribution to the art is prevented or hindered, or the establishment or development of commercial or industrial activities in Cyprus is unfairly prejudiced
- The manufacture, use or disposal of materials not protected by the patent, or the establishment or development of any commercial or industrial activities within Cyprus, is unfairly prejudiced by conditions attached by the owner of the patent to the grant of licenses thereunder or to the disposal or use of the patented product or the using of the patented process.
The application for registration of a person as registered user must be made jointly by the proprietor and the registered user of the trade mark and accompanied an affidavit sworn by the proprietor of the trade mark which must state the particulars of the relationship, existing or proposed, between the proprietor and the proposed registered user, the degree of control by the proprietor over the permitted use, whether the proposed registered user will be the sole registered user or whether there will be others, the mark or marks in respect of which the application is made, any conditions or restrictions proposed as regard to characteristics of goods, mode or place or permitted use or to any other matter, whether the permitted use is to be for an indefinite or a limited period and if the latter, its duration and any other documents, information or evidence the Registrar may require.
An exclusive license must be granted in writing and it is possible to give license for a future work. A non-exclusive license can be given in written, orally or by conduct of the parties.
An application for registration of a license may be made by licensor or licensee and must be accompanied by the original or certified copy of the agreement and any other documents that confirm the authority of each party to enter into the agreement. The signatures of the parties must be notarized. In certain cases, the court may grant compulsory licenses for designs.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
For Patents (in case of compulsory license), Trade marks and Designs, license must be recorded, otherwise it is not actioned.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
The difference of exclusive and non-exclusive licensees is that in case of an exclusive license the licensor cannot grant any other license regarding the licensed intellectual property and he cannot use or exploit the intellectual property himself.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Some intellectual property rights have criminal sanctions for infringement in certain conditions provided by the laws regulated these rights. The penalties vary from a fine to a term of imprisonment of up to three years as described below.
There are no criminal sanctions for patent infringement, but the law provides that it is a criminal offense not to comply with a Court order prohibiting the infringement of a patent in the future. The penalty is a fine that cannot exceed sixty thousand Euros or up to three-years imprisonment or both penalties. This provision also applies in case of non-complying with an order prohibiting the infringement of a trade mark or a copyright.
It is criminal offense to falsely represent a trade mark as registered or that it has been registered in respect of any goods or services in respect of which it is not registered. The penalty is a fine that cannot exceed two hundred and fifteen Euros.
The infringement of a copyright is a criminal offense. The penalty is a fine that cannot exceed eighty thousand Euros or up to three-year imprisonment or both penalties. For the second conviction and all the following convictions the penalty is a fine that cannot exceed a hundred thousand Euros or four-year imprisonment or both penalties.
Any person who fraudulently uses a design commits a criminal offence. The penalty is up to two-year imprisonment or a fine that cannot exceed eighty-five thousand Euros or both penalties.
The Cyprus Customs Act also provides that it is criminal offence to import into Cyprus or export out Cyprus a good which is infringing an intellectual property right. The penalty is a fine that cannot exceed three thousand Euros or up to five-year imprisonment or both penalties. For the second conviction and all the following convictions the penalty is a fine that cannot exceed five thousand Euros or five-year imprisonment or both penalties.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
In Cyprus, intellectual property rights can be enforced through Civil Court proceedings, by filing an action for infringement and/or passing off in the civil courts of Cyprus.
Once these proceedings have commenced, the claimant can seek interim relief such as interim injunctions, interim declarations, freezing injunctions which may also include ancillary disclosure orders, search orders and disclosure or inspection orders.
Proceedings before the Registrar are provided, such as opposition to trade mark registration proceedings and cancellation of trade mark or patent registration.
There are also customs procedures provided to stop the import and/or export of infringing goods under some circumstances. An application can be filed at the Department of Customs and Excise for border control of goods entering into the market which are suspected of infringing the intellectual property rights of the applicant. On the following Court proceedings, if it is decided that the intellectual property right has been infringed, an order for destruction of the goods or for any other treatment of the goods may be issued.
What is the length and cost of such procedures?
For civil court proceedings the estimate timeframe is approximately five years. The official cost depends on the quantum of damages sought and the intellectual property right in issue.
A notice of opposition to trade mark registration can be filed with the Registrar within two months form the publication of the application. This term is extendable. Then the applicant has two months to file a counter-statement, the parties may file evidence and a hearing will be held. The official fees of filing an opposition in trade mark registration proceedings are forty Euros.
In regards to custom procedures, when the owner of the intellectual property right applies to customs authorities, to customs authorities shall reply within one month from the date the application is filed.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
The Civil Courts have jurisdiction for actions for infringement and/or passing off. Proceedings can be commenced by the claimant filing a Claim Form, followed by Particulars of Claim, which outline the details of the case. Once the defendant has filed its Defence and any Counterclaim, and the claimant has had the opportunity to respond by his Response to Defence (or Defence to Counterclaim where applicable).
Following the filing of pleadings as described above, the disclosure of documents and a summary of evidence are filed by the parties and then the case is scheduled for hearing. Generally, Court proceedings can last approximately five years depending on the complexity of the matter. Appeals for infringement proceedings are to the Court of Appeal take three to four years to be heard.
The primary remedies sought in civil litigation are typically declaration that its right has been infringed, an injunction to prevent the other party infringing its rights, damages or an account of profits and legal costs, plus interest.
During the proceedings, the interim remedies that can be granted are interim injunctions, interim declarations, freezing injunctions which may also include ancillary disclosure orders, search orders and disclosure or inspection orders.
The claimant usually seeks for an interim injunction prohibiting the infringer from infringing or continuing to infringe the intellectual property right in question for as long as the proceedings are pending. The conditions which must be satisfied are the following:
- A serious question arises to be tried at the hearing.
- There appears to be “a probability” that the plaintiff is entitled to relief.
- It shall be difficult or impossible to have complete justice at a later stage without granting the interim injunction.
Interim injunctions may be secured on an emergency basis, by an ex parte application. Delay in making an application make it less possible for an interim injunction to be awarded.
The claimant will be required to give a cross-undertaking in damages to undertake to pay the defendant in the event that the interim injunction is wrongly granted.
An appeal to the decision can be filed before the Court of Appeal.
What customs procedures are available to stop the import and/or export of infringing goods?
Under circumstances, the customs authorities may be entitled to seize goods from being import into Cyprus. An application can be filed to this end at the Department of Customs and Excise for border control of goods entering into the market which are suspected of infringing the intellectual property rights of the applicant. The application can be either national or European.
The above applies in Cyprus pursuant to the Regulation (EU) N. 608/2013 concerning customs enforcement of intellectual property rights and covers Patents (and SPCs), Trade marks, Trade names, Geographical indications, Plant varieties, Topography of semiconductor products, Copyrights and Designs.
The customs enforcement of intellectual property rights cannot be used however, to goods:
- that have been released for free circulation under the end-use regime
- of a non-commercial nature contained in travellers’ personal luggage.
- that have been manufactured with the consent of the right-holder or to goods manufactured, by a person duly authorized by a right-holder to manufacture a certain quantity of goods, in excess of the quantities agreed between that person and the right-holder.
If it is not possible to secure the destruction of the products at customs level, Court proceedings should be commenced to determine whether the intellectual property right has been infringed, otherwise the products would be released.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
No unless contractual provisions to the contrary are provided.
What options are available to settle intellectual property disputes?
Negotiations and settlement can be achieved in Cyprus, for example by signing a co-existence agreement in relation to the intellectual property in issue. Other options to settle are mediation and arbitration.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
Infringement is established in case of a patent for a product by the manufacture, offering or putting on the market of a product incorporating the invention, or the use of such product, or the importation or stocking of such product for such offering or putting on the market or for such use, and inducting third parties to do any of these acts without the consent of the owner of the patent and in case and in case of a patent for a process by using the process which forms the subject matter of the patent and furthermore offering, putting on the market or use of a product directly resulting from the application of a patented process and the importation or stocking of such products for such offering or putting on the market or such use even where a patent cannot be obtained for such product and inducting third parties to do any of these acts without the consent of the owner of the patent.
Infringement is established when someone uses a trade mark without the consent of the owner of a trade mark by one or more of the following ways:
- Affixing the sign to goods or their packaging
- Offering or exposing goods for sale, putting goods on the market, or stocking goods for those purposes under the sign, or offering or supplying services under the sign
- Importing or exporting goods under the sign
- Using the sign on business papers or in advertising
The tort of passing off is established when the three following conditions are met:
- There is goodwill attached to the claimant's goods and/or services
- There has been a misrepresentation by the defendant leading or is likely to lead the public to believe that the goods and/or services they offer are the goods or services of the claimant or there is some other authorised link with the claimant and
- The claimant suffers damage as a result.
Copyright infringement is established when any person makes, causes or allows another person to make, an action which is protected by copyrights without the consent of the owner of the copyright. Copyright infringement is also established when any person imports into Cyprus or exports from Cyprus or trades or sell or hires or borrows or broadcasts or exhibits in public or communicates to the public or advertises any good protected by copyrights without the consent of the owner of the copyright. The date and the identity of the author must be proved before the Court.
Infringement of industrial design is established when any third party uses the registered design without consent of the owner. Use of a design may include manufacture, offer, distribution, import or export of a product or stocking of a product for those purposes.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Evidence can be given through affidavits and examination of witnesses on the stand.
There is no technical judge or a judge with technical experience. Parties can appoint expert witnesses, who can make a written report which is exhibited in an affidavit affirmed by the expert. The expert is subject to cross-examination.
Applications can be made before the Court for disclosure, disclosure of confidential information, disclosure against a non-party (Norwich Pharmacal orders), or search orders (Anton Piller Orders).
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Cross-examination is available at any trial. The length of cross-examination will depend on the nature of evidence given, its importance for the case and its complexity.
What defences to infringement are available?
Patents (and SPCs):
- The act was done privately and on a non-commercial scale, provided that it does not substantially prejudice the economic interest of the owner of the patent
- The act consists in making or using the invention for purely experimental purposes or for scientific research
- The act consists in the extemporaneous preparation of a medicine in accordance with a medical prescription made for individual cases by a medical doctor or in a pharmacy and act concerns a medicine thus prepared
- The act concerns a patent protected product which has been put on the market by the owner of the patent or with his explicit consent, committed after that product has been put on Cyprus market.
- No similarity between the trade marks involved.
- No similarity between the goods and/or services covered by the trade marks involved.
- The trade mark against which infringement proceedings have started it is not used in trade.
- The reputation of the trade mark against which infringement proceedings have started.
- Honest, concurrent use of the trade marks involved.
- Bona fide use of the trade mark against which infringement proceedings have started.
- Unreasonable delay by the claimant to start the infringement proceedings.
- Orphan works, that is to say works whose author is unknown, or cannot be determined by reasonable enquiry.
- Temporary copies of the works.
- “Fair dealing”, which is bona fide use of the work for research, private use, critical analysis or reference to current facts; in case of public use the title and the author of the work must be stated.
- Private use of the work for non-direct or indirect commercial purposes provided that the authors receive fair compensation.
- Reproduction of parts of the work under circumstances and provided that the author of the work is stated.
- Reproduction and distribution of copies of an artistic work which permanently installed in a place where it is visible to the public.
- Reproduction on paper by means of any photographic technique, except musical scores, provided that the authors receive fair compensation.
- Use of the work for educational, teaching and research purposes provided that the author of the work is stated.
- Use of the work for artistic, archival and cultural purposes.
- Incidental inclusion for artistic works in movies or programmes.
- Use of the work for information purposes, that is to say reproduction of articles related to financial, political and religious matters when their use is not expressly prohibited and provided that the name of the author is stated.
- Use of the work for social purposes.
- Use of the work for purposes of legal, parliamentary or administrative proceedings.
- Private and non-commercial act
- Act done for experimental purposes
- Reproduction for teaching purposes provided that the source of the design is revealed and these acts are not contrary to the customary trade and do not adversely affect the exploitation of the design
- Certain acts in respect of ships or aircraft registered outside of Cyprus
Who can challenge each of the intellectual property rights described above?
Any person interested.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
For patents, any person can file an application for cancellation of a patent certificate before the Court any time after the granting of a patent.
In regards to trade marks, an opposition can be filed within two months from the date of publication of the application during the registration process and invalidity application can be filed any time after the registration of the trade mark.
For designs, any interested person can file an application for cancellation of registration before the Court any time after granting of protection.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
In relation to patents, any person may apply to the Court for the invalidation of a patent. An application for invalidation may be based upon any of the following grounds only:
- The subject matter of patent was not novel or was not patentable for another reason.
- There is insufficient disclosure of the invention in a manner sufficiently clear and complete so as to allow it to be carried out by a person skilled in the art).
- The person to whom the patent was granted was not entitled to it.
After the registration of a trade mark, any person who is affected may apply to the Registrar or the court for the removal of a trade mark from the Register or for the revocation of the registration of a trademark on the ground of breach or non-compliance with any conditions imposed by the Registrar regarding its registration.
A registered trademark may be removed from the Registry of trade marks on any of the following grounds:
- The proprietor of the trade mark has not used the mark for five consecutive years in respect of the goods or services for which it is registered and there are no proper reasons for non-use.
- As a consequence of the owner’s behaviour the trade mark has become in the trade the common name for the goods or services for which it is registered.
- The trade mark has become deceptive as to the nature, quality or geographical origin of the goods or services in consequence of the use made of it by the owner or with his or her consent in relation to the goods or services for which it is registered.
A registered design can be removed in the basis that it is in conflict with a prior design which was registered in Cyprus or a Member State the European Union before the registration of this design.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
For patents, there is a provision for grant of a compulsory license under a patent as described on section 13 above.
In respect of trade marks, a trade mark may be removed from the Register if it is not genuinely used in bona fide manner in Cyprus by the registrant, during five consecutive years, unless the non-use is due to legitimate reasons.
The court may cancel the registration of a design which is in conflict with a prior design, which has been made available to the public after the filing of the application for registration, or where priority is claimed, after the date of priority of that other design, and which is protected from a date prior to the said filing date, or as the case may be, the said priority date by a design right in Cyprus or a Member State, or an application for registration in Cyprus or a Member State.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
The forms of interim remedies available are search orders (Anton Piller orders), disclosure orders (Norwich Pharmacal orders) and interim injunction that prevents the infringer from infringing or continuing to infringe.
As final relief, award of damages or account of profits, delivery up of the infringing articles, their forfeiture and destruction as well as injunction to prevent further infringement and declaration that the right in issue has been infringed may be granted.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
The costs of enforcement proceedings depend on the quantum of damages sought and the intellectual property right in issue.
The general rule is that the losing party pays the costs of the successful party but the Court takes into consideration a number of factors when deciding for the payment of the legal costs and may decide that the successful party shall pay its own costs.
A defendant can seek an order for security of costs so as to ensure that he will be able to recover its costs from the claimant. The claimant has to pay a sum of money into the court, as security for the defendant's costs. The application must be made by the defendant promptly or as soon as all justifying facts for the award of the order are known.