Trademarks
Revision No.
30 - Last
Updated :
09-10-2002
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Trade marks have been protected in Malta since 1899. Though the laws that enabled such protection
were amended several times over the years, it was nonetheless felt that the
varying needs and requirements of the business community necessitated a total
re-haul of the relevant legislation. As
a result, new legislation – the Trademarks Act (Act XVI of 2000) -- was enacted
in June 2000 which came into force on 1 January 2001.
In line with Malta’s present commitment to proceed with EU accession, the new legislation is not only
TRIPS-compliant but is also in line with the Acquis Communautaire*.
Malta is a member of the World Intellectual Property Organisation, the Berne Convention, the Madrid Protocol concerning the International Registration of Marks and the Paris Convention for the Protection of Industrial Property. Moreover, in 1995, Malta signed the World Trade Agreement that incorporated the TRIPS Agreement.
What constitutes a trade mark?
A trade mark is
any sign capable of being represented graphically or in words which is capable
of distinguishing goods or services of one undertaking from those of
another.
A trade mark may consist of words (including
personal names), figurative elements, letters, numerals or the shape of goods
or their packaging.
Collective marks as well as certification marks may also be registered. A collective mark is a mark which distinguishes the goods or services of members of an association from those of other undertakings. A certification mark is a mark indicating that the goods or services with which it is used are certified by the proprietor in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
Characteristics of a trade mark for it to be registered
In order to be
registered, a trade mark must possess the following characteristics:
· it should fall within the
above-mentioned definition of trade marks;
· it must possess a
distinctive character;
· it cannot consist exclusively of signs or indications
which designate the kind; quality; intended purpose; value; geographical
origin; time of production of the goods or of rendering of services; or other
characteristics of the goods or services in question; and
· it cannot consist exclusively
of signs or indications which have become customary in the current language or
in the particular genre of trade; and
· it cannot consist exclusively of the shape which results
from the nature of the goods themselves; or the shape of the goods which is
necessary to obtain a technical result; or the shape which gives substantial
value to the goods; and
· it cannot be contrary to
public policy or to public morals; or
· it cannot deceive or give
rise to the possibility of deceiving the public, inter alia, as to the nature, quality or geographical origin of the
goods or services.
Notwithstanding
the first 4 characteristics, the registration of a trade mark is not to
be refused if, before the date of application for registration, the trade mark
in question has acquired a distinctive character as a result of the use made of
it in Malta.
Trade marks
which consist entirely of a representation of the national flag of Malta
cannot be registered whereas those which contain a representation of the
national flag will not be required if they could mislead the public or be
grossly offensive.
Earlier trade marks
A trade mark
will not be registered if it is identical to an earlier registered trade
mark (or which has an earlier date of application) and it refers to similar or
identical goods or services in such a way that it is likely:
· to create confusion on the
part of the public; and
· that the public shall
associate such new trade mark with the earlier one.
However, mere association
without likelihood of confusion shall not prevent a trade mark from being so registered.
Thus, the Comptroller of Industrial Property may
accept to register a trade mark which, being identical or similar to an earlier
trade mark, is to be used in connection with goods or services which are
unrelated. If, however, the earlier
trade mark has a reputation in Malta and the registration of the new trade mark
would take unfair advantage of, or be detrimental to, the distinctive character
or reputation of the earlier trade mark, the Comptroller shall refuse to
register the new trade mark.
Rights conferred to proprietor of trade mark
The proprietor
of a trade mark has exclusive use of such mark. A registered trade mark is the personal
property of its owner.
Such rights have
effect as from the date of filing of the application for registration.
Co-proprietors
of a trade mark are entitled to act in respect of their trade mark in the most
ample of manners - including bringing infringement proceedings - without the
need of requesting the prior authorisation of the other co-proprietors.
However,
notwithstanding the above, a co-proprietor shall obtain the consent of the
other co-proprietors before:
· granting a licence to use a
trade mark; or
· assigning or ceding control
of his share in the trade mark.
The granting of
any such licence should be notified to the Comptroller of Industrial Property
in the prescribed manner.
Any such licence
to use a registered trade mark may be either general or, alternatively, limited
by reason of:
· the goods or services for
which the trade mark is registered; or
· the use of the trade mark in
a particular manner or locality.
Any such general
or limited licence may be exclusive.
Subject to the terms of the licence, an exclusive licence shall entitle
the licensee to bring infringement proceedings in his own name.
Any licensee
may, unless his licence provides otherwise, call on the trade mark proprietor
to institute infringement proceedings.
If the proprietor refuses to do so or fails to do so within 2 months
after being called upon, the licensee may bring the proceedings in his own name
as if he were the proprietor.
Where the
licence so provides, a licensee may grant a sub-licence.
Goods or Classes of Goods
A trade mark
must be registered for particular goods or classes of goods.
Where a trade
mark is to be used for different classes of goods, a separate application
should be filed for each separate class of goods indicated.
Requirements of a trade mark application
This involves
filing an application with the Comptroller of Industrial Property to which must
be attached:
¨ the name and address in full
of the applicant;
¨ a representation on a
durable material (such as strong card-board, parchment etc.) of the trade mark
to be registered;
¨ a statement of the classes [please view Appendix III for
a list of classes] in relation to which it is sought to register the trade mark;
¨ an indication that the trade
mark is being used by the applicant or with his consent in relation to those
goods or services or that he has a bona fide intention that it should be
used;
¨ an indication of the colours
in which it is sought to register the mark; and
¨ payment of the prescribed
fee.
In
addition, where the applicant is not present in Malta, a Power of Attorney
(Appendix II) signed by the applicant with the signature attested by a notary
and duly legalised with the Apostille on the reverse side according to the
Hague Convention or, alternatively, duly legalised by a Diplomatic or Consular
Representative of Malta is required.
A trade mark may be
registered in any colour whatsoever.
For a detailed list of
requirements please refer to Appendix I
Right of Priority
A
person who has applied for protection of his trade mark in any country which is
a member of the World Trade Organisation (WTO) or a member of the Paris
Convention for the Protection of Industrial Property has the right to claim
priority in registering the same trade mark for any or all of the same goods or
services for which the original application has been filed. Such claim to priority is applicable for a
period of 6 months from the date of filing of the first
application. The registration in Malta
shall have the same date of the application made in the country concerned.
If priority is
claimed, over and above the documentation already detailed, the standard
original certified priority documentation from the foreign Comptroller of
Industrial Property is required indicating clearly the country and the date of
filing of the first application made in the WTO or Convention country.
Examination of applications
The Comptroller
of Industrial Property shall carry out a search of earlier trade marks when
examining each new application for registration of a trade mark.
If it appears to
the Comptroller that the requirements for registration are not met, he shall
inform the applicant accordingly and afford him an opportunity to make
representations and, if necessary, to amend the application within 90 working
days from the request. In default, the
Comptroller shall refuse the application.
In such case, an appeal from the Comptroller’s decision lies before the
Court of Appeal.
NOTE
Once
filed with the Comptroller, a trade mark application may only be amended
by:
·
restricting the goods or services covered
by the application;
·
correcting the name or address of the
applicant;
·
correcting errors of wording or of copying;
or
·
correcting other obvious mistakes which do
not, however, substantially affect the identity of the trade mark or extend the
goods or services covered by the application.
If the formal
requirements have been observed, the Comptroller shall, on payment of the
prescribed fee, register the trade mark.
On registration
of a trade mark, the Comptroller shall publish a notification that such trade
mark has been registered and issue the applicant with a certificate of
registration.
Duration of trade marks
Trade marks are
registered for a period of 10 years which starts running from the date of
registration.
The date of
registration shall be the date on which the applicant furnishes all the
required information to the Comptroller.
If the data is submitted on different dates, the date of registration is
the date on which the last element is furnished.
Trade marks may
be renewed for further periods of 10 years at the request of the proprietor
after payment of the renewal fee within not more than 6 months before the date
of expiry. A trade mark which is not
renewed will be cancelled from the register.
Revocation of registration of a trade mark
The registration
of a trade mark may be revoked on any of the following grounds:
· if, within a period of 5
years from the date of registration, the trade mark has not been put to genuine
use in Malta and there are no proper reasons for such non-use;
· that such use has been
suspended for an uninterrupted period of 5 years and there are no proper
reasons for such non-use;
· that, due to acts or
inactivity of the trade mark proprietor, it has become the common name in the
trade for a product or service for which it is registered; and
· that, due to the use made of
the trade mark by its proprietor, or with his consent, it is liable to mislead
the public in relation to the goods or services for which it is registered (particularly as to the
nature, quality or geographical origin of those goods or services).
Any such
application for revocation may be filed by any interested person.
Register of trade marks
The Comptroller
of Industrial Property shall main a register of trade marks in which, inter alia, shall be registered such
particulars of registrable transactions affecting a registered trade mark*.
Until any such transaction is registered it shall be ineffective as
against any person acquiring in good faith a conflicting interest in the
registered trade mark.
The register
shall be open for public inspection.
The Comptroller
shall, on request, provide a person with such information and allow him to
inspect such documents relating to a registered trade mark as may be specified
in the request.
Registration prima facie evidence of validity
In all legal proceedings
relating to a registered trade mark, the registration of a person as proprietor
of a trade mark shall be prima facie evidence
of the validity of the original registration and of any subsequent assignment
or other transmission of it.
Criminal offences
Any person who,
without the trade mark proprietor’s consent, for personal gain or for another’s
gain or with intent to cause loss to another:
A.
applies
to goods or their packaging a sign identical to, or likely to be mistaken for,
a registered trade mark;
B.
sells
or lets for hire; offers or exposes for sale or hire; or distributes goods
which bear, or the packaging of which bears, such a sign;
C.
has
in his possession, custody or control in the course of a business any such
goods with a view to the doing of anything, by himself or another, which would
be an offence under paragraph B;
D.
applies
a sign identical to, or likely to be mistaken for, a registered trade mark to
material intended to be used for labelling or packaging goods, as a business
paper in relation to goods or for advertising goods;
E.
uses,
in the course of a business, material bearing such a sign for labelling or
packaging goods, or as a business paper in relation to goods, or for
advertising goods;
F.
has
in his possession, custody or control in the course of a business any such
material with a view to the doing of anything, by himself or another, which
would be an offence under paragraph E;
G.
makes
an article specifically designed or adapted for making copies of a sign of, or
to make a sign likely to be mistaken for, a registered trade mark;
H.
has
such an article in his possession, custody or control in the course of a
business;
I.
knowing
or having reason to believe that it has been, or is to be, used to produce
goods, or material for labelling or packaging goods, as a business paper in
relation to goods, or for advertising goods,
shall be guilty
of an offence and, on conviction, shall be liable to imprisonment for a term
not exceeding 3 years or to a fine not exceeding Lm10,000 or to both such fine
and imprisonment.
In addition, any
person who:
· falsely represents that a
mark is a registered trade mark; or
· makes a false representation
as to the goods or services for which a trade mark is registered,
shall, on
conviction, be liable to a fine not exceeding Lm5,000.
Pending any
criminal proceedings for any of the offences referred to above, the Court may
direct the Police to search for, seize and remove any such goods or things by
means of, or in relation to which the offence has been committed and which are
in any house or premises of the accused, or are in his possession or under his
control in any other place.
If the Court decides that such goods or things are liable to forfeiture, it may further direct that they be destroyed or, alternatively, that they be disposed of after the trade marks or other trade descriptions have been obliterated from them. From the net proceeds any persons who, being in good faith, were injured by the forfeiture, shall be awarded compensation for any loss caused to them.
Transition from old to new law
In the case of a
pending application for registration of a trade mark which has not been made
public before commencement of the new law, the applicant may give notice to the
Comptroller requesting to have the registrability of the mark determined in
accordance with the new law.
Notes :
Our Trademarks Act transposes Council Directive 89/104
to approximate the laws of the Member States and also makes provision allowing
for regulations to be made to extend the effect of the Community Trade mark
regime to Malta upon accession.
· This Document in PDF Format.
· Appendix I : Requirements for registration of a Trade Mark
· Appendx II : Power of Attorney & Declaration
· Appendix III : List of Classes of Goods
· Appendix IV : Schedule of Fees