Registration of trademarks in TRNC

Trademarks are a part of trading and our daily lives. It is the most natural right of consumers to distinguish between the products they use, to know who produced them and what their ingredients are. On the other hand, companies that produce these brands aim to distinguish their products from other brands, to determine the standards of their own products, to make profit in line with the demands of the market and to protect them against any infringement .Therefore, the registration of a brand is important for both the consumer and the manufacturer of that brand. The Law regulating trademarks in the TRNC is the Trade Marks Act No. 28/1995, Chapter 268.

The law describes brand asa form, description of a particular type of commodity or product, or a trademark, title, symbol, tag, name, signature, word, letter, number, or any combination thereof.[¹] From this point of view, we can define the brand as any sign such as shape, picture, graphic or drawing which is used to differentiate a product from other products.

1. Registration of Trademarks

Whether an owner of a brand is a TRNC citizen or not, trademarks are registered in the Registrar of Trademarks located in the Official Receiver and Registrar department. The Official Receiver and Registrar holds a register for trademark registration and keeps the two parts, A and B, of the registration record under its own supervision and control. This register is open to public investigation during the working hours.[²] The Official Receiver and Registrar have divided the trademarks into 34 different groups according to their types. The application for registration of a trademark must be made separately for each brand. Brand samples should be submitted for the application and a brand definition should be made explaining the shape and colour of the brand. The application for a trademark registration can also be made through a representative who is a resident in the TRNC. For an unregistered brand, a claim cannot be filed against claims for damages arising from the violation of the trademark. However, this rule does not affect the right to file a lawsuit regarding the release of goods (passing off).[³]

A person who has registered a trademark in part A of the register shall have the exclusive right and authority to use the merchandise related to that trademark. Therefore, the use of a trademark without the permission of the registered owner in which the trade mark is identical, or so strikingly similar or that the consumer is deceived as to the products in relation to which the trade mark is registered for and/or using, referring to or perceiving the registered products of that brand in advertisements or advertisements in relation to the products to which that trade mark is associated, will infringe the registered trademark.

2. Trademarks registered to Part A of the Registry

In order for a trademark to be registered in part A of the register, it must have the following characteristics;

1. The real or legal entity has a specific or determined name,
2. The signature of the applicant or his authorized representative for registration;
3. The trademark must have a made up or invented word or made up words,
4. The trademark must not refer directly to the type or quality of the goods and the word must not contain a geographical name or a surname.
5. The trademark to be registered must given the extent to which all the circumstances and conditions examined by the registrar, be distinctive.[⁵]

2. a - Cases where no violation will be present for the trademark registered to Part A of the registry

If any person without the permission of the registered owner of a trademark, uses or processes that brand or the products of that trademark shall be deemed to have violated the trade-mark and is liable to remedy the damages suffered as a result of the violation by the registered trademark owner. However, in some cases, the use of that trademark by someone else, even if registered by a trademark owner, will not cause a violation. The relevant law thus provides some exceptions. These exceptions are as follows:

1. If the registered owner of the trademark has put the trade-mark on the goods and has not removed or deleted the trade-mark.
2. If the registered owner of the trademark has expressed or implied consent to the use of the trade mark at any time,[⁶]
3. The trademark is to be used for goods that constitute part of other goods or which are produced as accessories of such goods. If the use of the brand is reasonably necessary to show that the goods are part of that brand, and the purpose and effect of the use of the brand is not the act of demonstrating a connection between the merchant and the merchandise commercially, the use of one or more of the two or more registered trademarks that are very similar to each other shall not be construed as violating the rights of the registered trademark owner.

2.b - Trademarks registered in section B and the violations of this trademark

The brands that can be registered in part B of the register are sufficient to have a distinctive quality. When evaluating the distinctiveness criteria, the registrar may take into account the extent to which distinctiveness is inherent or, when considering all the relevant conditions, to what degree it occurs.

The registration of any trade mark or part of the same trade mark or the same trade mark in the name of the same owner to Part A is not an obstacle for the registration of a trade mark in the B part of the register. However, the Registrar may, with the consent of the applicant, instead of rejecting the application for registration in part A of the register, make the registration to Part B. In practice, registrations to Part B of the Register usually have a geographical name or a surname in the trademarks.[⁷]

As we mentioned earlier, the other part of the record, which is maintained by the Registrar, is called part B. The exclusive right to use the trademark obtained by the owners of the trademarks registered in part A applies also to the owners of the trademarks registered in part B of the register. In the case of applications for the violation of trademarks that are registered in part B of the registry and in court proceedings, if the defendant can prove that there is no possibility of confusion about the trademark in question, or that there is no impression of a link between the goods in use and the registered trademark, then there will be no violation of the brand.This defence applies except for cases where there is a violation of trademarks under Section 8 of Article 268.