In their recent judgements, the Cyprus courts decided as to the importance and what they are looking for in order to satisfy the requirement as to the ownership of a trademark.
In a nutshell
Both parties are well known and respected manufacturers of ice cream in Cyprus. The plaintiffs alleged that production of 3 different individual ice creams which included in their name, packaging and labelling the word “plaka” had started years before. However, the Plaintiffs omitted to register any trademarks as to that effect.
The Defendants went on to produce a new ice cream package in 2019 with the imprinted word “plaka” as its official name, on the assumption that the word “plaka” is a descriptive word describing in essence a special category of ice cream and that no trademarks were registered either including or pertaining to the word “plaka”.
The first instance case
In the first instance case, claim with No. 1655/19, the Plaintiffs sought to prevent the Defendants from using the word “plaka” on any of their products or any advertisements on the basis of passing off, as provided by Section 35 of the Torts Law Cap. 148 (‘Torts Law’). The Plaintiffs submitted an application requesting interim relief in the form of a prohibitory injunction on the basis of Section 32 of the Courts of Justice Law 14/1960 and Section 9 of the Civil Procedure Law. The hearing of the application was made inter partes. The Plaintiffs alleged that the word “plaka” is a descriptive word incapable of ownership by any party as it pertains to a specific category of ice cream and not an individual product.
The court set the important parameters for its satisfaction in issuing interim orders according to Section 32. These are the urgency of the matter, a strong prima facie case stated by the applicant and the difficulty in delivering justice at a later stage if the order is not issued. It is noted that proof of the substantive right is not needed at the interim stage. Therefore, the Plaintiffs were only required to prove serious indications of the existence of passing off. The tort of passing off entails the violation of the plaintiffs’ right of property to their business’s goodwill. No fraudulent intent or special damage needs to be proved except for the possibility of some damage occurring.
The court attempted an extensive analysis of goodwill along with the evidence required for its existence and the level of similarity required between such words or signs. However, the Court stated that the tort of passing off could not ordinarily have as its premise a descriptive title or word, such as “plaka”. Nevertheless, referring to well-known British textbooks, the Court reinstated that such a word may cease to be descriptive and come to indicate the goods of a particular trader. To that effect, the court noted that by extensive use of the descriptive word “plaka” by the Plaintiffs, the word acquired distinctive character capable of being distinguished as a term referring exclusively to the specific ice cream as produced and manufactured by the Plaintiffs. This in turn made it possible for the Plaintiffs to seek protection under Section 35 of the Law. It is noted that Section 35 does not entail a prerequisite for the sign to be registered as a trademark prior to seeking protection.
The Plaintiffs did manage to provide sufficient evidence of goodwill through extensive advertisement, article writing and market share.
The court eventually issued the requested interim relief albeit in a more limited way.
Both parties went on to appeal the first instance decision. The supreme court in its recent judgement to the civil appeal with No. E127/20 reinstated and confirmed the findings of the district court judge dismissing both the appeal and the cross-appeal.
The importance of this Judgment lies not in the ability the Plaintiffs had to assert their rights onto a purely descriptive word but instead in the breadth and depth of evidence required to prove their rights.
You can find out about the importance of trademark registrations and the value they impose onto your business here.
The content of this article is valid as at the date of its first publication. It is intended to provide a general guide to the subject matter and does not constitute legal advice. We recommend that you seek professional advice on your specific matter before acting on any information provided. For further information or advice, please contact Agis Charalambous, Head of Intellectual Property Department, Nicosia at +357-22447777 or by email at firstname.lastname@example.org