1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The primary statutory source of trademark rights and protection in Malta is the Trademarks Act (Chapter 596 of the Laws of Malta), together with the applicable subsidiary legislation which regulates such rights. The Trademarks Act transposes EU Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks. The Commercial Code (Chapter 13 of the Laws of Malta), the Enforcement of Intellectual Property Rights (Regulations) Act (Chapter 488 of the Laws of Malta) and the Intellectual Property Rights (Cross-Border Measures) Act (Chapter 414 of the Laws of Malta) are also important sources of trademark rights and protection.
1.2 How do trademark rights arise (ie, through use or registration)?
In accordance with the laws of Malta, trademark rights and protection arise through prior use and/or registration with the Industrial Property Registrations Directorate. Furthermore, in various circumstances, proprietors of trademarks registered in foreign countries may be granted trademark rights and protection in Malta.
1.3 What is the statutory or other source of the trademark registration scheme?
The statutory source of trademark registration in Malta is the Trademarks Act (Chapter 596 of the Laws of Malta), together with the applicable subsidiary legislation which regulates such rights.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
In accordance with the laws of Malta, a designation or other identifier consisting of any signs, words (including personal names) or designs, letters, numerals, colours, the shape of goods or their packaging or sounds may serve as a trademark in Malta.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
The Trademarks Act provides that the designation or identifier must have a distinctive character, thereby being capable of distinguishing the goods and/or services of one undertaking from those of others. Furthermore, the designation or identifier must be represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
The Trademarks Act provides for a number of grounds for refusal of registration of a designation, both absolute and relative.
Absolute grounds for refusal include the following:
- The designation or identifier is devoid of distinctive character;
- The designation or identifier consists exclusively of signs or indications that may serve in trade to indicate the kind, quality or intended purpose of the goods, among other things;
- The designation or identifier is a shape resulting from the nature of the goods or is a shape that gives substantial value to the goods;
- The designation or identifier is contrary to public policy or accepted principles of morality; or
- The designation or identifier may or is likely to deceive the public as to the nature, quality or origin of goods or services.
Relative grounds for refusal include the following:
- The designation or identifier is identical to an earlier registered trademark and the goods or services are also identical; or
- The designation or identifier is identical or similar to an earlier trademark and the use of the later trademark would take unfair advantage or be detrimental to the distinctive character or reputation of the earlier trademark.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The governing body that controls the registration process is the Industrial Property Registrations Directorate within the Malta Commerce Department.
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
The filing fee applicable for the application of a trademark per class is €116.47.
3.3 Does the trademark office use the Nice Classification scheme?
The Industrial Property Registrations Directorate adopts the Nice Classification in describing and classifying goods and services.
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
The Trademarks Act provides that the applicant is obliged to specify the goods and/or services for which the trademark will be used in order to proceed with the registration. Nevertheless, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision requested by the Industrial Property Registrations Directorate.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
The Trademarks Act provides that a trademark may be declared invalid should the application be made in bad faith.
Thus, while the applicant may lodge an application, the trademark may be revoked should the lack of good faith be proven.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
As part of the application process for registration of a trademark, the Industrial Property Registrations Directorate will examine the trademark applied for with a critical eye, especially with respect to any prior rights associated with the proposed trademark. From a practical point of view, the Industrial Property Registrations Directorate will evaluate whether the proposed trademark may potentially breach any rights associated with earlier registered trademarks or prior applications for the registration of trademarks, as registered or filed in Malta or with the EU Intellectual Property Office. The results of the search will be notified to the applicant, which may elect to withdraw the application. If the applicant does not withdraw the application, the Industrial Property Registrations Directorate will proceed with publication of the application. An opposition to registration may be subsequently filed by third parties with the Industrial Property Registrations Directorate.
3.7 What types of examinations does the trademark office perform other than relative examination?
Further to question 3.6, the Industrial Property Registrations Directorate will examine the trademark application in order to determine whether it satisfies the requirements set out in the Trademarks Act. Nonetheless, it is at the discretion of the Industrial Property Registrations Directorate to request any further documentation it deems fit and necessary.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
Yes, in accordance with the laws of Malta, a trademark may not be registered if it violates public policy or morality, or if it is of a nature which may deceive the public as to the nature, quality or geographical origin of the goods and/or services. Furthermore, a trademark may not be registered if its use is prohibited in Malta through the application of rule of law or if the application was made in bad faith.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
No, the Industrial Property Registrations Directorate has one register which includes all trademarks registered in Malta.
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
Sending a letter of protest to the applicant and/or the Industrial Property Registration Directorate is not prohibited and is thus possible. However, the prescribed procedure is that where the Industrial Property Registrations Directorate receives an application for registration of a trademark which is deemed potentially identical or similar to a previously registered mark, the Industrial Property Registrations Directorate will inform the applicant in relation thereto, which may elect to withdraw the application. If the applicant does not withdraw the application, the Industrial Property Registrations Directorate will proceed with publication of the application. A notice of opposition may then be filed with the Industrial Property Registrations Directorate within 60 working days of publication of the trademark application, claiming and providing evidence that the trademark applied for should be refused on relative grounds in accordance with the Trademarks Act.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
Under Maltese law, a trademark is liable to be declared invalid where the application for registration was made in bad faith. Accordingly, the applicant need only meet the prescribed requirements in order to register a trademark in Malta, without providing particular evidence of commercial use. Nevertheless, the registration may subsequently be revoked if the trademark is not put to genuine use in commerce in Malta for a period of five years from the date of registration, or if such use is suspended for a continuous five-year period.
3.12 How much time does it typically take from filing an application to the first office action?
It generally takes about two to three months from the date of filing to the date of first action.
3.13 How much time does it typically take from filing an application to publication?
Normally, it takes between five and six months from the date of filing to the date of registration.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
Yes, a decision of the Industrial Property Registrations Directorate refusing registration can be appealed before the Court of Appeal.
4.2 What is the procedure for appealing a trademark office refusal?
A decision of the Industrial Property Registrations Directorate refusing registration may be appealed by filing an application before the Court of Appeal within 15 days of service of the decision.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
If, further to an appeal filed with the Court of Appeal, an individual applicant deems that the refusal to grant registration constitutes a violation of his or her human rights in any manner, he or she may file an application with the Constitutional Court in Malta.
5.1 Can a third party oppose a trademark application?
A notice of opposition may be filed:
- on the basis of one or more earlier rights, provided that they all belong to the same proprietor; and
- on the basis of some or all of the goods or services in respect of which the earlier right is protected or applied for.
Opposition proceedings may be directed against some or all of the goods or services in respect of which the contested mark is applied for.
5.2 Who has standing to oppose a trademark application?
In principle, the following have standing to oppose a trademark application:
- the proprietor of an earlier trademark (a Malta registered trademark, an EU registered trademark or a trademark registered under international arrangements which have effect in Malta); and
- any person authorised under the relevant law to exercise the rights arising from a protected designation of origin or geographical indication.
Where an earlier mark has more than one proprietor or where an earlier right may be exercised by more than one person, an opposition may be filed by any or all of the proprietors or authorised persons.
5.3 What is the timeframe for opposing a trademark application?
A notice of opposition of a trademark application may be lodged based on relative grounds for refusal within 60 days of publication of the trademark application.
Thereafter, the parties may be granted, at their joint request, up to 90 working days from the date of notification by the Industrial Property Registrations Directorate of the opposition to the applicant, during which they may seek to reach an amicable settlement.
5.4 Which body hears oppositions?
The body which hears oppositions is the Industrial Property Registrations Directorate.
5.5 What is the process by which an opposition proceeds?
Where the opposition is found to be admissible in terms of Maltese trademark law, the following procedure is generally followed.
On receipt of the opposition notice, the Industrial Property Registrations Directorate will examine the opposition for the purposes of admissibility. If the Industrial Property Registrations Directorate finds particular deficiencies, it will inform the opposing party accordingly and invite it to remedy those deficiencies within 10 working days of the date of notification. If the deficiencies are not remedied within this timeframe, the opposition is rejected.
If the opposition is found admissible, the Industrial Property Registrations Directorate will notify the applicant that, within 60 working days of the date of notification, it may:
- withdraw its application;
- restrict the goods and services covered by the application; or
- submit a counterstatement outlining grounds against the opposition.
If the applicant withdraws the application, the proceedings are closed.
If the applicant restricts the goods and services, the Industrial Property Registrations Directorate will invite the opposing party to state, within 10 working days of the date of such invitation, whether it maintains the opposition, and if so, against which of the remaining goods or services the opposition is being maintained. If the opposing party withdraws the opposition in light of the restriction, the opposition proceedings are closed.
If the applicant submits a counterstatement, the Industrial Property Registrations Directorate will notify the opposing party and send it a copy of the counterstatement. The opposing party must then inform the Industrial Property Registrations Directorate in writing, within 20 working days of the date of notification of the counterstatement, whether it is withdrawing or maintaining the opposition. If the opposition is being maintained, the opponent must also submit the prescribed fee and any additional documentation outlining the grounds on which the opposition is being maintained. The Industrial Property Registrations Directorate will then make its decision based on the information and evidence provided by the opposing party and the applicant.
The decision will be communicated to the applicant and to the opposing party.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
Notice to appeal a decision of the Industrial Property Registrations Directorate must be filed before the Court of Appeal by application within 15 days of service of the decision.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
Unregistered trademarks are recognised under Maltese trademark law, in accordance with the general principles of Maltese law as codified in the Commercial Code (Chapter 13 of the Laws of Malta). In this respect, the Commercial Code provides that, regardless of whether a name, mark or distinctive device has been registered as a trademark, traders may not make use of any name, mark or distinctive device that is capable of creating confusion with any other name, mark or distinctive device lawfully used by others. In such instances, a trader that contravenes another's rights is liable, at the choice of the injured party, either to an action for damages and interest or to a penalty. According to the circumstances of the case, the trader may also be liable to any other remedy capable of remedying the unlawful act.
6.2 What legal rights are conferred by a trademark registration?
The Trademarks Act provides that a registered trademark is a property right obtained through registration of the trademark under the same act. The proprietor of a registered trademark enjoys the rights and remedies provided by the Trademarks Act.
In particular, registration of a trademark confers on the proprietor exclusive rights to use the registered trademark in relation to the goods and services for which the trademark is registered. Accordingly, among other things, the proprietor of a registered trademark is entitled to prevent unauthorised third parties from using in the course of trade any sign which is identical or similar to the registered trademark and used in relation to goods or services which are identical or similar to those for which the trademark is registered, provided that there is a likelihood of confusion on the part of the public.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
The Trademarks Act requires the designation or identifier to be distinctive. Descriptive marks are generally deemed to be in violation of this requirement and hence are not registerable.
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
In case of infringement of a registered trademark, the proprietor of the trademark may file a sworn application with the First Hall of the Civil Court. All relief that is generally available in respect of the infringement of any other property right is available to the plaintiff. Therefore, the plaintiff can request precautionary acts including injunctions, payment of damages and the permanent erasure, removal or destruction of any infringing goods, material or articles in the offender's possession, custody or control.
Additionally, the Trademarks Act provides that, as part of the infringement proceedings, the proprietor of a registered trademark may, by application, ask the First Hall of the Civil Court for an order for delivery up to the proprietor, or such other person as the court may direct, of any infringing goods, materials or articles which a party has in its possession, custody or control in the course of business. In such cases, where infringing goods, materials or articles have been delivered further to an order of the court, an action by sworn application may be filed with the court by any party seeking their destruction or forfeiture in favour of such person as the court may think fit, or seeking a decision that no such order should be made.
Moreover, the proprietor or licensee of a registered trademark may, in accordance with the Enforcement of Intellectual Property Rights (Regulations) Act (Chapter 488 of the Laws of Malta), file an application with the First Hall of the Civil Court to:
- issue a decree against the alleged infringer to:
- prevent any imminent infringement;
- forbid (on a provisional basis and subject, where appropriate, to a recurring penalty payment) the continuation of the alleged infringement; or
- make any continuation subject to the lodging of guarantees intended to ensure compensation for the rights holder;
- issue an interlocutory injunction, under the same conditions, against an intermediary whose services are being used by a third party to infringe an IP right; or
- order the seizure or delivery up of the goods suspected of infringing the right.
Apart for civil actions, infringers are also exposed to criminal liability. Any party that, with a view to making a gain for itself or another or causing loss to another, and without the consent of the proprietor, undertakes any of the actions listed in the Trademarks Act is guilty of an offence and liable to imprisonment for a term up to three years, a fine of not more than €23,295 or both. The actions listed in the act that constitute an offence should the necessary intent be present are mainly as follows:
- the application to goods or their packaging of a sign that is identical to, or likely to be mistaken for, a registered trademark;
- the unauthorised sale or distribution of packages and articles bearing a sign which is identical to, or likely to be mistaken for, a registered mark;
- the application or use of identical or similar marks that could be mistaken for a registered mark on labelling, business papers or advertising;
- the making of an article specifically designed or adapted to make copies of, or to make a sign likely to be mistaken for, a registered trademark; and
- the actual possession, custody or control in the course of business of any such goods, packaging or articles, with a view to undertaking any of the actions listed as amounting to an offence; or the possession of an article in the course of business in the knowledge or with reason to believe that it has been or will be used to produce infringing goods, labelling, packaging, business papers or advertising.
7.2 What remedies are available against trademark dilution?
The same remedies as are available for infringement are likewise available for claims of trademark dilution.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
Yes, Maltese trademark law also recognises the possibility to bring an action requesting revocation or invalidation of a registered trademark.
7.4 What is the procedure for pursuing claims for trademark infringement?
Infringement of a registered trademark is actionable by the proprietor of the trademark by sworn application filed with the First Hall of the Civil Court. Such an application should contain as much detail as possible concerning the alleged infringement, together with any documentary evidence or testimony, through either affidavits, expert reports or witness evidence. As from January 2023 (or any date before as may be prescribed by the minister) invalidity and revocation proceedings must be initiated before the Industrial Property Registrations Directorate.
Such application may be accompanied or preceded by a request for the approval of a precautionary act – generally a request for a prohibitory injunction – against the alleged infringer. In such proceedings, the court will decide on a prima facie basis whether infringement has occurred and will grant or refuse the preliminary remedy request, which must be followed by the filing of the proper judicial proceedings for determination on the merits of the case.
A licensee may bring proceedings for trademark infringement only if the proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor, after formal notice, does not itself bring infringement proceedings within an appropriate period.
7.5 What typical defences are available to a defendant in trademark litigation?
Generally, the following defences are normally put forth by a defendant in trademark litigation:
- The disputed mark is not being used as a trademark;
- The disputed mark is being in relation to goods or services that fall outside the scope covered by the registered trademark, or in relation to goods or services that are dissimilar to those covered by the registered trademark;
- The disputed mark is not similar to the registered trademark;
- There is no likelihood of confusion or association; and
- The registered trademark has not been used for a continuous period of five years.
Should there be grounds for such actions, the defendant may bring a counterclaim, including an action for revocation or invalidation of a registered trademark.
7.6 What is the procedure for appealing a decision in trademark litigation?
As is the case with all civil proceedings, the aggrieved party retains a right to appeal the decision before the Court of Appeal subject to the filing of an appeal application.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The trademark is registered for 10 years from the date of filing of the application. The registered trademark may thereafter be renewed for further 10-year periods at the request of the proprietor.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
Upon the expiration of the initial period of a registered trademark, the proprietor may apply to the Industrial Property Registrations Directorate to renew the registration for further 10-year periods. This request must be submitted to the Industrial Property Registrations Directorate accompanied by the appropriate renewal fee during the six months immediately preceding expiry of the registration or the subsequent renewal thereof.
Late renewal is also possible, if submitted within the six months immediately following expiry of the registration or the subsequent renewal thereof.
If the proprietor fails to renew the registered trademark within the aforementioned periods, the Industrial Property Registrations Directorate will remove it from the trademark register. However, the proprietor can still renew the registration by filing a request in relation thereto within six months of the date of removal, accompanied by the appropriate renewal fee and restoration fee.
8.3 What are the grounds for cancelling a trademark registration?
A registered trademark may be surrendered by the proprietor in respect of any or all of the goods or services for which it is registered.
A registered trademark that is not properly renewed will be removed from the register.
Additionally, the registration of a trademark may be revoked in various instances, including if:
- the trademark has not been put to genuine use in Malta for a period of five years from the date of registration; or
- use of the trademark has been suspended for a continuous five-year period.
A trademark registration may also be declared invalid if:
- the trademark has become the common name in trade for goods or services for which it is registered, through the inaction of the proprietor; or
- the trademark is liable to mislead the public, in particular as to the nature, quality or geographical origin of the goods or services.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
On reviewing the application for registration of a trademark, the Industrial Property Registrations Directorate may elect to refrain from registering the trademark on its own initiative and discretion if, among other things, the trademark is deemed to be devoid of distinctive character or consists exclusively of signs or indications which may serve in trade to designate the kind, quality, intended purpose, value or other characteristics of the goods or services.
Thereafter, upon approval and registration thereof, the Industrial Property Registrations Directorate may not cancel the trademark on its own initiative. However, a request for revocation or invalidity may be filed by any third party.
A registered trademark that is not properly renewed will be removed from the register by the Industrial Property Registrations Directorate.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
The aggrieved party should file a sworn application with the First Hall of the Civil Court seeking cancellation or revocation of a trademark registration.
8.6 What is the procedure for appealing a decision cancelling a registration?
As is the case with all civil proceedings, the aggrieved party retains a right to appeal the decision before the Court of Appeal within the prescribed period from the issuance of the first judgment.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
No. A trademark granted in accordance with the Trademarks Act is a property right which may be licensed to third parties, exclusively or non-exclusively, at the proprietor's sole discretion for some or all of the goods or services for which it is registered, and for the whole or part of Malta.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
A licence to use a registered trademark may be general or limited and exclusive or non-exclusive. The parties must notify the Industrial Property Registrations Directorate of the execution of a licensing agreement in relation to a registered trademark.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
The licensor may have his rights to the trademark attacked in a number of instances outlined at law, including as an example, in cases where the trademark is not put to genuine use for period of five years. The law does not specifically provide for situations where the licensor can lose the right to the trademark in cases of non-compliance with obligations under the licence provided to licensees. This does not exclude the licensor being liable for any damages caused to the licensee in cases of breach of obligations outlined in the licensing agreement.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
The laws of Malta ensure that any holder of a foreign trademark not registered in Malta may enforce its trademark rights in the Maltese jurisdiction. Such rights and protection are granted in accordance with the Commercial Code (Chapter 13 of the Laws of Malta), which prohibits traders from making use of any mark that is capable of creating confusion with another mark lawfully used by others in Malta, even where such other mark is not registered under the Malta Trademarks Act.
The laws of Malta also provide that the proprietor of a well-known trademark (as per the terms of the Paris Convention) is entitled to restrain by injunction the use in Malta of a trademark which is identical or similar, in whole or in essential part, to its trademark in relation to identical or similar goods or services, and is thereby likely to cause confusion.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Trademarks filed in a foreign country which is a member of the World Trade Organization or a signatory to the Paris Convention are granted a right to claim priority/seniority for the purposes of registering that trademark in Malta for any or all of the goods or services for which the application had been filed, for a prescribed period from the date of filing.
While Malta is not a signatory to the Madrid Protocol, it is indirectly effective in Malta, in that it has been signed by the European Union, of which Malta is a member state.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.