IP Rights Enforcement Directive implemented

Cyprus has implemented the IP Rights Enforcement Directive by passing the Trademarks Amending Law 121(I)/2006 on July 28 2006 - nearly three months after the implementation deadline.

The main amendments are as follows:

• Article 50A of the new law provides that the courts may order evidence to be presented by the opposing party, subject to the protection of confidential information, when the other side (i) has presented evidence that is sufficient to support its claim for infringement or imminent infringement, and (ii) in substantiating those claims, has specified evidence which lies in the control of the opposing party. Where the infringement is committed on a commercial scale, the courts may also order the opposing party to communicate banking, financial or commercial documents. Such applications may be heard ex parte.
  
  The confidential information that may be provided under these articles may be used only for the purpose specified by the court order. For any other uses additional court orders must be obtained.
  
  
• Article 50B provides that the courts may order that information on the origin and distribution networks of the goods or services that infringe a trademark be provided by the infringer and/or any other person who:
  
  
  • was found in possession of the infringing goods on a commercial scale;
    
    
  • was found to be using the infringing services on a commercial scale;
    
    
  • was found to be providing on a commercial scale services used in infringing activities; or
    
    
  • was indicated by the person referred to in the first three points as being involved in the production, manufacture or distribution of the goods or the provision of the services in question.
    
    

  The information referred to above may consist of:
  

• the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers; or
  
  
• details of the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the goods or services in question.
  
  
• Article 53A provides that if there is a finding of trademark infringement, the court may issue against the infringer an injunction aimed at prohibiting the continuation or repeating of the infringement. Non-compliance with the injunction will bring a penalty of up to C£35,000 ($77,950) and/or imprisonment of up to three years.
  
  
• Article 53A(2) provides that the court may order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of the information concerning the decision, including displaying the decision and publishing it in full or in part.

The provisions contained within the directive were already covered by national law, which explains why only part of the directive is implemented by the amendment law - and mostly for the purpose of clarifying the Trademarks Law. For instance, Civil Procedure Rules and case law already allow parties to a trademark infringement case to obtain disclosure of documents relevant to the proceedings that are in the custody or control of another party.

What Cypriot trademark attorneys would like to see is a simplified procedure to obtain information on the producers, manufacturers and distributors of the infringing products. IP rights owners are aiming to fight this group of infringers rather than numerous (and usually minor) resellers of the goods. However, the main official body defending IP rights owners - namely, Customs - is not authorized to disclose to the IP rights owner any information on the producers or manufacturers of counterfeit goods (apart from those relating to the importers). Thus, producers cannot be sued at the initial stages.

The positive aspect of the amendment, however, is the imposition of penalty fees for repeat infringements, which was absent from the existing law.

Tonia Antoniou, Michael Kyprianou & Co, Nicosia