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practise direction

For the purpose of adopting a common framework governing the protection of black and white trade marks in Cyprus, the Cyprus Department of Registrar of Companies and Official Receiver has issued a new practice direction, which will apply for applications which will be submitted from 15/07/2014 onwards. 

The practice direction regulates priority, relative grounds for refusal and the matter of genuine use. As far as priority is concerned, the practice until today was that priority for black and white trade marks or trade marks in grayscale tones, was considered identical to the same mark in colour.  As from today, priority claimed for black and white marks is no longer identical to the same mark in colour, provided that the colour differences are not insignificant.  

Also, priority claimed for a mark in tones of grayscale is no longer identical to the same mark in colour or in black and white, provided that the colour differences or the differences in the contrast of shades are not insignificant. An insignificant difference between the two marks is a difference that a reasonably observant consumer perceives only upon side by side examination of the marks. As far as the relative grounds of refusal are concerned, the previous practice was that black and white marks or marks in tones of grayscale were identical with the same mark in colour for purposes of relative grounds for refusal. Onwards, relative grounds of refusal for the same mark in colour cannot be raised by reference to an earlier black and white mark, provided that the colour differences are not insignificant.

Similarly, relative grounds of refusal for the same mark mark in tones of grayscale cannot be raised by reference to an earlier black and white mark, provided that the colour differences or the differences in the contrast of shapes are not insignificant. 

 For application/procedures which will be submitted from 15/07/2014, there will be no clause for colour limitation in the acceptance decision. In regard to the colour marks, the acceptance decision will also imply at the same time the colours limitation, as these appear in the application. In regard to the black and white marks or the marks in grayscale tones, the acceptance decision will also imply at the same time the colours limitation (white, black or grayscale) as these appear in the application, as well as the colour differences and differences in the contrast of shades that are insignificant.

As far as the genuine use is concerned, the use of colour version of a mark registered in black and white or in grayscale tones, was until recently accepted for the purposes of establishing genuine use. Onwards, a change regarding only the colour does not alter the distinctive character of the mark, as long as the following requirements are met: the word/figurative elements coincide and are the main distinctive elements; the contrast of shades is remains unchanged; the colour or combination of colours does not possess distinctive character in itself, and; the colour is not one of the main contributors to the overall distinctiveness of the mark.

For establishing genuine use, the principles which are applicable in black and white marks are also applicable to marks in grayscale tones.

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