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September, 20 2018
September, 13 2018
The Value of Intellectual Property Rights in Cyprus
The Value of Intellectual Property Rights in Cyprus:
Intellectual property law covers a whole range of processes, ideas and inventions. It gives protection not only to the creators, owners and authors against infringement but also members of the public who rely on the safety, reliability and authenticity of the products.
The purpose of this article is not to provide a detailed study of the various Intellectual Property rights but to give a brief outline of the different types of rights, the laws regulating their existence, the protection that they afford and the role that they play when considering the internet.
The modern era of the internet has brought about a greater demand for knowledge and understanding of the intellectual property rights and the protections that they afford; the potential for infringement and the laws that regulate the internet and behavior whilst using it. The internet contains many web sites for a constantly increasing range of businesses and individuals. It is used by many businesses as a form of advertising and for the supply of goods and services; hence advertising, contractual and intellectual property law has become increasingly important for users of and those affected by this new medium.
Cyprus is a signatory to a number of Treaties and follows the latest Intellectual Property laws, bringing the country into line with the ‘acquis communautaire’ and the international Intellectual Property laws.
Definition of Intellectual Property
The World Intellectual Property Convention 1968, Article 2, defines Intellectual Property as including, inter alia,
Literary, artistic and scientific works;
Inventions in all fields of Human Endeavour;
Trade marks, services marks and commercial names;
Protection against unfair competition and,
Other rights arising from intellectual activity in the industrial, scientific, literary and artistic fields.
The Courts in Cyprus take a strict line on issues relating to Intellectual Property in order to afford proper protection from any infringements and contraventions.
Trade marks are governed by the Trade Marks Law, Cap 268, as amended by Laws 63/62, 69/71, 206/90 and 176(I) 2000 and by the Regulations of 1951-1992.
A trade mark provides a monopoly right which prevents others from unfairly benefiting from the mark, commercially, financially or in any other manner. The international trade mark classification for goods and services applies, whereby goods and services are categorized into 34 classes and 8 classes respectively. The classification is carried out in accordance with an International Agreement, the Nice Classification (6th ed).
If an applicant wishes to register a mark, they need to file an application which contains all the necessary information regarding the mark, including a picture and description of it. The mark, if accepted for registration, is valid for an initial period of 7 years. This may be renewed by further applications for 14 years periodically. A mark can be accepted either absolutely or conditionally by the Registrar. If the conditions that are imposed are not satisfied, then the Registrar has the discretion to reject the application outright. If this occurs, the applicant may apply for Judicial Review, which can be achieved under Article 146 of the Constitution. The application goes to the Supreme Court of Cyprus, where a decision will be made under the courts’ revisional jurisdiction powers.
If the mark is accepted, the acceptance is then advertised in the Official Gazette of Cyprus for a two month period. During this period, any individual may give notice to the Registrar to oppose the registration. If an objection is made, the applicant is given a copy of the notice of opposition. The applicant then needs to provide the Registrar with a copy of any counter statement to the person who opposes the registration. The Registrar will consider the parties’ arguments and make a decision as to whether the application for registration is to be granted in the light of the circumstances.
Trade marks are becoming more significant in the information technology industry, particularly in their use on the internet in domain names, domain names may give also rise to passing off issues as well as those relating to trade marks. Firstly to put the issue into context it is important to understand what a domain name comprises of, it can be easily defined as a sign post on the internet, the unique name of a website that identifies it from others.
The allocation of domain names tends to be on a first come, first served basis. It is possible that there will be more than one business or individual interested in owning certain easy to remember domain names. In the UK case of Pitman Training Ltd and Anor v Nominet UK and Anor, two businesses, originating from a break up of the Pitman business, both claimed they had the right to own the domain name “pitman.co.uk”. Pearson was the first to register the domain name as its own. During the time when Pearson’s web site was being developed, unknown to it, its registration was transferred to Pitman Training Ltd. Both Pitman Training Ltd and Pearson spent money advertising their web sites. When Pearson realized its domain name registration had been transferred, it persuaded Nominet, the body responsible for registering domain names in the UK to reassign the domain name to Pearson. Pitman Training Ltd commenced legal proceedings against both Pearson and Nominet to regain control of the domain name. Pitman Training Ltd was unsuccessful as not only had it been the second party to apply for the domain name, it was also bound by reason of the original break up and sale agreement to only use the word Pitman in conjunction with the word training, unlike Pearson which was able to use the word pitman alone.
Let us turn to the leading case of British Telecommunications plc v. One in a Million Ltd (1999) for further example of the use of domain names and their relationship with intellectual property law.
The factual context of the case involved One in a Million having registered a number of well-known trade marks with a view to making a profit by selling them on to the relevant brand owners and third parties. Activities such as this are known as cyber squatting, this activity constituted a false representation to persons who consulted the domain name register that one in a Million was in some way connected with or associated with the name registered; this therefore amounted to the intellectual property action of passing off.
It was therefore held that registration of the domain names to exploit the marks’ indications of origin and the threatened disposal of the domain names was unfair and harmful to the distinctive character and reputation of the trade marks. The Court held that the registration of famous trade marks as domain names and their use would constitute a trade mark infringement even though the marks were not used by the defendant.
The Court ordered that One in a Million be restrained from the use or sale of the domain names in question and be compelled to assign the domain names to the plaintiffs, the trade marks owners.
Even though the domain names in question included a number of non- UK names, the UK Court found that actions involving these names occurring within the UK fell within its jurisdiction. If you register a domain name in a foreign country, you cannot consider yourself immune from legal action within your own jurisdiction, if that domain name infringes a trade mark.
Trade marks are not only relevant to domain names. Due to the rapid growth of the number of web sites, there is a great deal of competition in business to attract potential visitors to a particular site in preference to other sites of competitors which may have similar information. One method used is to include “meta tags” on the pages, which constitute your site. Meta tags are a form of computer code, this is then analyzed by internet search engines, but not visible in the normal viewing layout of a web site page. Commonly, meta-tags will include subject headings which you expect in advance that people will use to find the information contained on your web site.
To date there appears to be a great deal of confusion surrounding the issues of trade marks and domain names. It is not transparent as to why trade names and domain names are necessarily seen as synonymous, having the same meaning but with different implications and associations. Perhaps a potential explanation may be that as a domain name is an address which when used by a company may symbolize the company’s address, the domain name may suggest quality, origin and identity and so may actually function as a trade mark.
If a domain name is seen as synonymous with a trade mark, which it appears it is, then there seems to be no reason why actions for trade mark infringement should not succeed based on either confusion or dilution.
The second important Intellectual Property right that needs highlighting is that of patents. A new Patents Law has been passed, Law 16 (I) of 1998, however, a main provision which departs from the old Cap. 266 is that an independent local authority for the registration of patents has been established.
A patent gives the exclusive right to make use of an invention or process for a specific period of time. In Cyprus, the lifetime of a patent is 20 years from the date of its filing. The registration and protection of patents is regulated by the Patents Law 16(I)98, as amended by Laws 21(I)99, 153(I)2000 and 163(I)2002 and by the Patent Regulations of 1999-2000.
S.5 of Part III of the law defines the instances where an invention is capable of being patentable. It is not patentable unless it is new, involves an inventive step and is capable of industrial application. Law 16 (I) of 1998 s.5(1), sub-section (2) of s.5 indicates the situations where inventions will not be regarded as inventions for the purposes of s.5(1), these being;
Discoveries, mathematical methods and scientific theories, Aesthetic creations and Schemes, rules and methods of performance
S.5(3) states that a patent shall not be granted for an invention, the exploitation of which would be contrary to public order or morality.
The patent must be novel, under s.6 sub section (1) and it will be new if it doesn’t form part of the ‘state of the art’. Sub-section (2) of s.6 states that it will not form part of the state of the art if it has not been made available to the public, whether in Cyprus or elsewhere, prior to the application.
Under s.7, there must also be an inventive step. To fulfill this requirement, it must not have been obvious to an expert skilled in the art. This follows the structure of s.3 of the English Patents Act 1977.
As there are many similarities between the Cyprus Law and the English law, it follows that decisions of the English Courts will provide a persuasive authority in Cyprus.
The third main intellectual property right is that of copyright, a right which requires no registration as it comes naturally into existence. The law of copyright in Cyprus is governed by the Copyright and Neighboring Rights Law 1976, Cap. 59, as amended by Laws 63/77, 18 (I) 1993, 54 (I)1999, 12 (I)2001, 128I)2002 and 128(I)2004. The law protects the rights of a qualifying person.
A qualifying person is defined as being:
a person who is a citizen of Cyprus or who habitually resides in Cyprus,
a legal person;
a citizen of another member state of the EU.
No protection is afforded to authors who are neither citizens or habitual residents of Cyprus or who do not publish in Cyprus first, however, s.18 of the Right of Intellectual Property Law does extend some protection to works of non-Cypriots. In order to take advantage of this protection, the works should be eligible for protection by virtue of international treaties or conventions which are binding upon Cyprus, for example, the Universal Copyright Convention.
The term of protection lasts for the author’s life and a period of 70 years, commencing upon the death of the author. Copyright laws are designed to encourage the creation of literary works, artistic works and expressions of national culture.
If the Cyprus Courts find that copyright has been infringed, the penalties now include fines and imprisonment, which can be for a period of up to three years. It is also possible that the Court may order offending items to be destroyed or submitted to the true owner. There are also civil remedies which include an account of profits made. These tighter penalties appear to be the beginning of the realization and a reflection of the actual importance of the need to protect intellectual property rights.
Finally, consideration should be given to the act of passing off. There are three elements of a passing off action, goodwill, misrepresentation and damage. The principal aim of bringing an action for passing off is to prevent one person benefiting from the goodwill of the business of another.
Goodwill can be defined as something which distinguishes a business, product or service from others of the same type. It is the attraction that brings customers to prefer the product to other brands in a similar range and it provides a badge of identity for the business, product or service. Goodwill is established through use of the mark in business, but the goodwill must generally exist in the country for protection to be afforded to the mark.
In order to bring an action for passing off, misrepresentation must occur. The misrepresentation must lead to confusion in the minds of the public as to the origin of the product.
It must also be proven that there is actual or likely loss of business as a result of the confusion. This can be proven in several ways: loss of profit in an existing market, loss of the chance to expand into potential markets or loss of reputation due to complaints made or a drop in recorded sales figures would be strong ways to prove the loss and damage suffered.
Accession to the European Union and the growth of international business in and with Cyprus has brought about a greater awareness of the importance of intellectual property to individuals and businesses and the need to protect intellectual property rights. The Laws are now becoming harmonized between the contracting member states. The ideal position would be uniformity in the treatment of intellectual property rights across all member states. It is our belief that this goal is and will be achieved.
We consider that the amount of damages which could potentially be claimed from an infringement of intellectual property rights on the internet may be much greater than other forms of potential infringement because of the likely audience which is so large and the speed of transmission which in the ever increasing technological know how is incredibly quick. There are many developments, which we expect to see in the near future which will see electronic commerce spreading widely throughout the world. Whenever there are changes in technology, there is always a lag period before our laws can be updated and modified to suit the new commercial environment.
We advise users of the internet, especially in relation to business’ to seek legal advice before using any form of mark on the internet and also with regards to protecting your existing marks and rights in the growing internet era to prevent any clashes with national and international law.
The law as it stands today is not without its flaws, however, as awareness grows, it is our opinion that so will the laws and their application so that greater protection will be afforded. We are able and willing to provide advise on any of the areas covered by this article.
By Rebecca E. Howarth,