Guidance

Examination of the invalidity application

Substantiation of invalidity

In case where the Section deems that no evidence substantiating the application has been submitted, it requests from the applicant to submit such evidence, through the trademark's e-filing system or by hand/post , within two (2) months, by the form for substantiation of application for declaration of invalidity (form Ε.Σ 28), accompanied with relevant documents regarding the existence, validity and extent of protection of a previous mark or right of the applicant, as well as relevant documents regarding the applicant’s right to pursue an application for trademark invalidity, such as:

• evidence of use of widely known trademark in the territory of the Republic of Cyprus;
• evidence that the trademark enjoys reputation in the Republic of Cyprus or the European Union;
• details regarding the acquisition, continuous existence and extent of protection of a designation of origin or geographical indication;
• details regarding the acquisition, continuous existence and extend of protection of an unregistered trademark or a distinctive characteristic used in transactions;
• certificate of submission of registration application or registration certificate.

It is noted that no fees are paid with the submission of the form.

In case of no timely compliance or in case where the evidence submitted is deemed insufficient, the Section dismisses the application.

e-filing 

Substantiation of beneficiary - proof of use

Provided that the Intellectual Property Section deems the evidence submitted sufficient, it sends the applicant’s application and evidence to the trademark beneficiary, who must submit, within two (2) months of receipt of the relevant notice through the trademark's e-filing system or by hand/post a form for observations of objection/invalidity respondent (form  Ε.Σ 17).

It is noted that no fees are paid with the submission of the form.

Failure to submit the said beneficiary observations by the beneficiary within the prescribed deadline leads to the issue of decision on the basis of documents and evidence that have already been submitted.

At the same time, in case of application for declaration of invalidity on the basis of an earlier registered trademark or right, the beneficiary may request that the applicant for declaration of invalidity proves that the same has made substantial use, or the existence of reasonable cause for non-use, of the earlier mark. To this effect, the beneficiary submits through the trademark's e-filing system or by hand/post , the request for proof of substantial use (form  Ε.Σ 18). It is noted that no fees are paid with the submission of the form.

e-filing 

Applicant’s reply - proof of use

The Section forwards to the applicant for the declaration of invalidity the beneficiary’s observations and/or request for proof of substantial use and request him to submit within two (2) months of the date of the relevant notification, through the trademark's e-filing system  or by hand/post , the observations and, depending on the case, proof of substantial use by the form Ε.Σ 19. Evidence of substantial use of a previous trademark concern the place, time, extent and nature of use and is, for example, packaging, price lists, invoices, photographs or advertisements.

It is noted that no fees are paid with the submission of the form.

In case where the applicant for declaration of invalidity fails to prove in time the substantial use of their mark or that there is reasonable cause for non-use, the application for invalidity is dismissed. In case where such applicant proves substantial use of their trademark only for part of products or services, the procedure of declaration of invalidity shall continue only for the part of products or services.

e-filing 

Additional observations

In exceptional cases and upon request of the parties, the Section may, prior to the issue of the decision, allow the parties to submit, through the  trademark's e-filing system or by hand/post , further observations and evidence by the application for additional observations (form Ε.Σ 20). It is noted that no fees are paid upon the submission of this form.

e-filing 

Extension of deadline

Following a reasoned request submitted, through the  trademark's e-filing system or by hand/post , with the application for deadline extension/ procedure suspension (form Ε.Σ 11) and provided that this is deemed justified under the circumstances, the Section may grant extension to any deadline during the examination procedure of the application for declaration of invalidity pending before it.

It is noted that no fees are paid upon the submission of this form. Such extension may be subject to the agreement of all parties.

e-filing 

Hearing

The invalidity declaration procedure is carried out in writing, however, upon a reason request submitted, either through the trademark's e-filing system or by hand/ post , with the hearing application (form Ε.Σ 21), and provided that this is deemed justified under the circumstances, the Section may allow oral hearing. It is noted that no fees are paid upon the submission of this form.

e-filing 

Termination of procedure

Any of the parties in a trademark invalidity procedure may terminate it before its completion, by submitting, either through the trademark's e-filing system or  by hand/post , the application for termination of procedures (form Ε.Σ 05 ) and is burdened with the costs incurred by the other party. It is noted that no fees are paid upon the submission of this form.

e-filing