Registering marks in Cyprus: a guide for foreign rights holders

Trademarks in Cyprus are governed by the Trademarks Law (Cap 268), which was amended to comply with EU legislation when Cyprus joined the European Union on 1st May 2004. Under the law, rights holders can register words, logos (devices), names, pictures, letters, numerals, shapes, colours and packages as trademarks.

In order for an application to be accepted, a mark should fulfil certain criteria. Namely, it must:

• be capable of graphical representation; 
• be distinctive; and 
• not be deceptive in relation to pre-existing trademarks.

After an application is filed, it is subsequently examined by the registrar, who takes into account the factors mentioned above. However, parties wishing to apply to register a trademark in Cyprus would do well to bear in mind the particularities of the Cyprus registrar. For instance, the registrar has a rather peculiar outlook on the meaning of ‘distinctiveness’. For the registrar, distinctiveness per se is directly linked to inventiveness. Therefore, the registrar commonly objects to a registration where the mark applied for is a common word in the English language. In addition, the registrar’s objection may be based on any similarity of the applied mark to a pre-existing registered mark in order to avoid possible confusion.

However, any objections may be overcome by applying for a hearing at which an affidavit will be filed in order to demonstrate the acquired distinctiveness of the mark and/or by making a comprehensive comparison between the requested mark and the pre-existing mark(s), depending on the grounds for refusal.

Due to these idiosyncrasies, a party interested in a Cyprus registration should conduct a preliminary search on the mark it wishes to register. This can be accomplished either by requesting the registrar of companies and the official receiver to provide official advice on the registrability of the mark, or by requesting an unofficial search from a law firm.

Searches provided by law firms are usually more comprehensive than those provided by the registrar’s office. Further, the client can specify the extent of the search (eg, a simple or elaborate search, or a legal opinion), whereas the registrar conducts only a standard search for all requests. Moreover, searches conducted by law firms are concluded sooner than those conducted by the registrar.

In addition to the registrar objecting to an application, third parties may also file oppositions within two months of the application's publication in the Official Gazette. Usually, such an opposition is based on an identical or similar pre-existing mark.

In such event, the applicant may file a counter-opposition within two months of the date of the notice of opposition being served. The counter-opposition should contain the grounds on which the applicant is relying. The parties subsequently exchange affidavits and a hearing is conducted before the registrar. The registrar’s decision can then be appealed in court.

Despite the possible obstacles to the registration of a trademark, Cyprus has a significant geographical location and is a sensitive point of entry into the EU market. Therefore, protecting IP rights through registration is imperative when considering the use of a mark.