Trade Mark Laws And Regulations Malta 2024

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Camilleri Preziosi Advocates

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Camilleri Preziosi commands an outstanding reputation amongst clients and peers as a leading Maltese corporate law firm. We are regularly ranked as a top-tier firm by Chambers, IFLR1000 and Legal 500. We retain a strong commitment to deliver a quality service in the practice of law. We do this by combining technical excellence with a solution-driven approach. Camilleri Preziosi: Technical excellence, practical solutions.
The relevant authority is the Comptroller of Industrial Property as established under article 3 of the Patents and Designs Act (‘Comptroller').
Malta Intellectual Property
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1. Relevant Authorities and Legislation

1.1 What is the relevant trade mark authority in your jurisdiction?

The relevant authority is the Comptroller of Industrial Property as established under article 3 of the Patents and Designs Act (‘Comptroller').

1.2 What is the relevant trade mark legislation in your jurisdiction?

The main legislative instruments are the:

  1. Trademarks Act, Chapter 597 of the Laws of Malta (‘TA') and its subsidiary legislation, namely the Trademark Rules, Subsidiary Legislation 597.04;
  2. Intellectual Property Rights (Cross-Border Measures) Act, Chapter 414 of the Laws of Malta (‘IPRMA'); and
  3. Enforcement of Intellectual Property Rights (Regulation) Act, Chapter 488 of the Laws of Malta (‘EIPRA').

The principal European Union (‘EU') trade mark legislation is the European Union Trade Mark Regulation (EU 2017/1001).

2. Application for a Trade Mark

2.1 What can be registered as a trade mark?

A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

  1. distinguishing the goods or services of one undertaking from those of other undertakings; and
  2. being represented on the register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

2.2 What cannot be registered as a trade mark?

Trade marks that fall foul of absolute grounds for refusal (see question 3.1) and relative grounds for refusal (see question 4.1) cannot be registered.

2.3 What information is needed to register a trade mark?

An application to register a trade mark requires the following information to be submitted in the English or Maltese language:

  1. name, address and contact details of the proprietor (and representatives where applicable);
  2. class and applicable list of goods or services to be covered by the mark;
  3. representation and description of the mark;
  4. declaration claiming priority (where applicable);
  5. indication of exclusivity over colour (where applicable);
  6. indication of whether the mark is a Certification mark or Collective mark (where applicable); and
  7. the prescribed fee.

2.4 What is the general procedure for trade mark registration?

Prior to the filing of a trade mark application, it is recommended that the applicant conduct searches for identical or similar marks.

After filing, the Comptroller examines the application to determine whether the trade mark satisfies the requirements of the TA. Where the requirements for registration have not been met, the applicant is given an opportunity to make representations or amendments to the application.

Where the requirements for registration are satisfied, the application is accepted and, if no oppositions are filed, a certificate of registration is issued by the Comptroller.

2.5 How is a trade mark adequately represented?

The TA provides that a trade mark can be adequately represented in any appropriate form using generally available technology, as long as it can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner so as to enable the competent authorities and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor.

2.6 How are goods and services described?

Goods and services are described and classified according to the Nice Classification.

2.7 To the extent ‘exotic' or unusual trade marks can be filed in your jurisdiction, are there any special measures required to file them with the relevant trade mark authority?

It is possible to file trade mark applications to register colours, sounds, marks consisting of (or extending to) a movement or a change in the position of the elements of the mark, multimedia marks and holograms. Specific trade mark application requirements with respect to each type of mark are set out within the TA.

2.8 Is proof of use required for trade mark registrations and/or renewal purposes?

No. Proof of use is not required for trade mark registrations and/or renewal purposes.

2.9 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

A Maltese trade mark covers the Republic of Malta.

2.10 Who can own a trade mark in your jurisdiction?

Any natural or legal person may own a trade mark.

2.11 Can a trade mark acquire distinctive character through use?

Yes. Maltese law caters for this scenario both before and after the filing of a trade mark application.

2.12 How long on average does registration take?

Registration takes approximately eight months to one year from the filing date.

2.13 What is the average cost of obtaining a trade mark in your jurisdiction?

Registration in one class costs €115. A further €115 is due per additional class.

2.14 Is there more than one route to obtaining a registration in your jurisdiction?

A Maltese trade mark can only be registered through a direct filing with the Comptroller's office. However, an applicant may also opt to register a European trade mark (‘EUTM'), which covers all the Member States of the EU including Malta.

Although Malta is not a member of the Madrid System, an applicant filing an international registration may designate the EU as a Contracting Party to the Madrid Protocol.

2.15 Is a Power of Attorney needed?

Yes, a Power of Attorney is needed.

2.16 If so, does a Power of Attorney require notarisation and/or legalisation?

Notarisation and/or legalisation are not required; however, to ensure sound commercial practice, it is recommended that a Power of Attorney is notarised and/or legalised, and apostilled to ascertain the authenticity of the document.

2.17 How is priority claimed?

Priority must be claimed at the time of filing of an application in Malta and by no later than six months from the date of filing of the first application.

2.18 Does your jurisdiction recognise Collective or Certification marks?

Yes, both Collective and Certification marks are recognised.

3. Absolute Grounds for Refusal

3.1 What are the absolute grounds for refusal of registration?

Absolute grounds for refusal include:

  1. the mark is not a sign capable of graphical representation or distinguishing the goods or services claimed from those of other undertakings;
  2. the mark is devoid of any distinctive character;
  3. the mark consists exclusively of signs or indications that may serve, in trade, to indicate the kind, quality, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics;
  4. the mark consists exclusively of signs or indications that have become customary in the current language or established practices of trade in goods or services claimed;
  5. the sign is a shape resulting from the nature of the goods;
  6. the sign is a shape of goods that is necessary to obtain a technical effect;
  7. the sign is a shape that gives substantial value to the goods;
  8. the mark is contrary to public policy or accepted principles of morality;
  9. the mark may or is likely to deceive the public as to the nature, quality or origin of goods or services;
  10. the use of the trade mark is prohibited in Malta by a rule of law;
  11. the application was made in bad faith; or
  12. the mark consists of the unauthorised use of a specially protected emblem in Malta, in Paris Convention countries or in international organisations.

3.2 What are the ways to overcome an absolute grounds objection?

If the objection is based on lack of distinctiveness, applicants may overcome that objection on the basis of providing evidence that the mark has acquired distinctive character as a result of its use in Malta.

3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

A refusal of registration may be appealed before the Court of Appeal.

3.4 What is the route of appeal?

An appeal application is filed before the Court of Appeal within 15 days of service of the Comptroller's decision.

4. Relative Grounds for Refusal

4.1 What are the relative grounds for refusal of registration?

Relative grounds for refusal of registration include that:

  1. the mark is identical to an earlier trade mark registered and the goods or services are also identical;
  2. the mark is identical or similar to an earlier trade mark registered for identical or similar goods or services, and a likelihood of confusion exists on the part of the public, including the likelihood of association to the earlier trade mark;
  3. the mark is identical or similar to an earlier mark with a reputation in Malta and the use of the later trade mark would take unfair advantage or be detrimental to the distinctive character or repute of the earlier mark; or
  4. the use of the mark in Malta is liable to be prevented by virtue of the law protecting unregistered trade marks or other signs used in the course of trade, copyright or registered designs.

4.2 Are there ways to overcome a relative grounds objection?

The applicant may: (i) institute proceedings for invalidation or revocation of the earlier mark; (ii) limit the specification of the mark to eliminate the conflict with the earlier mark; or (iii) enter into a co-existence agreement with the proprietor of the earlier mark.

4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

See question 3.3 above.

4.4 What is the route of appeal?

See question 3.4 above.

5. Opposition

5.1 On what grounds can a trade mark be opposed?

See question 4.1 above.

5.2 Who can oppose the registration of a trade mark in your jurisdiction?

The proprietor of an earlier trade mark and the person authorised under the relevant law to exercise the rights arising from a protected designation of origin or geographical indications may file applications to oppose the registration of a trade mark in Malta.

5.3 What is the procedure for opposition?

An opposition notice is filed before the Comptroller within a period of 90 days following the publication of a trade mark application. The notice of opposition should contain a reasoned statement on the grounds, facts and arguments on which the opposition relies, and supporting evidence. Where the opposition is found admissible, the Comptroller notifies the applicant that, within a period of 90 days from the date of notification, the applicant may:

  1. withdraw the application;
  2. restrict the goods and services by deleting from his application some or all of the goods against which the opposition is directed; or
  3. submit a counterstatement against the opposition and any supporting evidence and a reasoned statement on the grounds, facts and arguments with respect thereto.

If the applicant chooses to restrict its goods and services, the Comptroller will notify the opponent of such restriction and will allow the opponent 30 days to inform the Comptroller if the opposition is being maintained against the remaining goods and services. The Comptroller notifies the applicant of the opponent's maintenance of the opposition and provides the applicant with 30 days in which to respond. The opponent is then granted 90 days to submit additional evidence and the applicant is then granted another 90 days to reply. The Comptroller must then proceed to issue its decision.

Where a counterstatement is submitted in terms of paragraph (c) above, the Comptroller will notify the opposing party of the counterstatement and also send a copy of the counterstatement to the opposing party. Within 90 days of the date of notification of the counterstatement, the opposing party will inform the Comptroller, in writing, whether it is withdrawing or maintaining the opposition. Where the opposing party informs the Comptroller that the opposition is being maintained, it must submit the prescribed fee and any additional supporting evidence and a reasoned statement on the grounds, facts and arguments on which the opposition is being maintained. The Comptroller will notify the applicant accordingly and provide the applicant with 90 days within which to file any additional supporting evidence and a reasoned statement on grounds, facts and arguments. The Comptroller will proceed to take a decision based on the information and evidence provided by the opposing party and the applicant. The decision is then communicated to the applicant and to the opposing party.

The parties can be granted, at their joint request, a period of up to 90 working days from the date of the notification by the Comptroller of the opposition to the applicant in order to allow for the possibility of a friendly settlement between the opposing party and the applicant.

6. Registration

6.1 What happens when a trade mark is granted registration?

The registration is published in the official online journal, or any other official publication as may be decided by the Comptroller, and the applicant is issued a certificate of registration.

6.2 From which date following application do an applicant's trade mark rights commence?

A proprietor has exclusive rights from the date of filing of the application.

6.3 What is the term of a trade mark?

The term of a trade mark is 10 years from the date of filing the application.

6.4 How is a trade mark renewed?

A trade mark may be renewed for a further period of 10 years by filing a request for renewal at any time within a period of six months before the date of expiration of the registration. Late renewal is also possible up to six months from the date of expiration with an additional penalty fee. Restoration is possible up to a period of another six months from the date of removal of the mark and must be accompanied by the prescribed renewal and restoration fees. After this period, the trade mark cannot be renewed and a new application must be submitted.

7. Registrable Transactions

7.1 Can an individual register the assignment of a trade mark?

Yes, an individual can register the assignment of a trade mark.

7.2 Are there different types of assignment?

Yes. An assignment may be partial or limited. It may apply to some but not all of the goods or services and it also may apply in relation to the use in a particular manner or a particular locality.

7.3 Can an individual register the licensing of a trade mark?

Yes, an individual can register the licensing of a trade mark.

7.4 Are there different types of licence?

Yes. A licence may be general or limited and may therefore apply to some but not all of the goods or services for which the trade mark is registered, or it may apply in relation to the use in a particular manner or a particular locality. A licence may also be an exclusive licence or a non-exclusive licence. An exclusive licence can be either general or limited and has the effect of authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a trade mark in the manner authorised by the licence.

7.5 Can a trade mark licensee sue for infringement?

Yes. Unless the licence provides otherwise, a licensee is entitled to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter that affects his interests and, in such a case, the proprietor shall be joined in the suit. If the proprietor fails to do so within two months after being called upon, the licensee is entitled to bring the proceedings in his own name as if he were the proprietor. An exclusive licence may provide the licensee with equivalent rights and remedies of a proprietor, meaning that the former may bring infringement proceedings in his own name against any person other than the proprietor. Where infringement proceedings are brought and both the licensee and the proprietor have concurrent rights of action, the party who is not the plaintiff shall be joined in the suit.

7.6 Are quality control clauses necessary in a licence?

No. However, it is recommended that they are included in order to prevent the trade mark from being used in a manner that could prejudice the proprietor of the mark.

7.7 Can an individual register a security interest under a trade mark?

Subsidiary Legislation 597.04 specifies that a request for the registration of a right in rem may be submitted to the Comptroller as long as the right in rem is recognised in Malta.

7.8 Are there different types of security interest?

Yes. There are two types of trade mark-relevant security interests under Maltese law: the pledge; and the security by title transfer. A pledge confers upon the creditor the right to obtain payment out of the thing pledged with privilege over other creditors, whereas a security by title transfer confers a transfer of title to an asset to a lender by way of security, subject to the obligation to transfer the asset back once the underlying debt has been paid.

8. Revocation

8.1 What are the grounds for revocation of a trade mark?

A trade mark may be revoked on any of the following grounds:

  1. within the period of five years following registration, it has not been put to genuine use in Malta, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for such lack of usage;
  2. use has been suspended for an uninterrupted period of five years, and there are no proper reasons for such non-use;
  3. in consequence of acts or inactivity of the proprietor, it has become a common name in trade for a product or service for which it is registered; or
  4. a trade mark is liable to mislead the public in relation to the goods or services for which it is registered.

8.2 What is the procedure for revocation of a trade mark?

The revocation of a registered trade mark may be brought before the Comptroller as provided for under the TA or by sworn application to be filed in the First Hall of the Civil Court.

If brought before the Comptroller, the notice for revocation should be submitted with the prescribed fee and also contain a reasoned statement on the grounds, facts and arguments on which the notice relies, and supporting evidence. Where the notice for revocation is found admissible, the Comptroller notifies the trade mark owner that, within a period of 90 days from the date of notification, the owner of the trade mark may:

  1. surrender the trade mark;
  2. restrict the goods and services covered by the trade mark; or
  3. submit a statement against the notice of revocation and any supporting evidence and a reasoned statement on the grounds, facts and arguments with respect thereto.

Where a statement is submitted, the Comptroller will notify the applicant who filed the notice of the statement and also send a copy of the statement to the applicant. Within 90 days of the date of notification of the statement, the applicant will inform the Comptroller, in writing, whether he is withdrawing or maintaining the notice for revocation. Where the applicant informs the Comptroller that the notice is being maintained, he must submit the prescribed fee and any additional supporting evidence and a reasoned statement on the grounds, facts and arguments on which the notice is being maintained. The Comptroller will proceed to take a decision based on the information and evidence provided by the applicant and the trade mark owner. The decision is then communicated to the applicant and to the trade mark owner.

8.3 Who can commence revocation proceedings?

Any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, and which, under the terms of the law governing it, has the capacity to sue in its own name and to be sued.

8.4 What grounds of defence can be raised to a revocation action?

Evidence can be brought demonstrating the use of the mark commenced or resumed before the initiation of revocation proceedings, either by the proprietor or by authorised licensees. Where genuine use cannot be demonstrated, the proprietor may attempt to adduce that it had proper reasons for non-use, such as regulatory constraints, which are not within a proprietor's control.

8.5 What is the route of appeal from a decision of revocation?

An appeal from the decision of the First Hall of the Civil Court may be entered before the Court of Appeal within 20 days from the date of judgment. An appeal from the decision of the Comptroller may be entered before the Court of Appeal within 15 days of service of the Comptroller's decision.

9. Invalidity

9.1 What are the grounds for invalidity of a trade mark?

See questions 3.1 and 4.1 above.

9.2 What is the procedure for invalidation of a trade mark?

The invalidation of a registered trade mark may be brought before the Comptroller as provided for under the TA or by sworn application to be filed in the First Hall of the Civil Court.

If brought before the Comptroller, the notice for declaration of invalidity should be submitted with the prescribed fee and also contain a reasoned statement on the grounds, facts and arguments on which the notice relies, and supporting evidence. Where the notice for declaration of invalidity is found admissible, the Comptroller notifies the trade mark owner that, within a period of 90 days from the date of notification, the owner of the trade mark may:

  1. surrender the trade mark;
  2. restrict the goods and services covered by the trade mark; or
  3. submit a statement against the notice of revocation and any supporting evidence and a reasoned statement on the grounds, facts and arguments with respect thereto.

Where a statement is submitted, the Comptroller will notify the applicant who filed the notice of the statement and also send a copy of the statement to the applicant. Within 90 days of the date of notification of the statement, the applicant will inform the Comptroller, in writing, whether he is withdrawing or maintaining the notice for declaration of invalidity. Where the applicant informs the Comptroller that the notice is being maintained, he must submit the prescribed fee and any additional supporting evidence and a reasoned statement on the grounds, facts and arguments on which the notice is being maintained. The Comptroller will proceed to take a decision based on the information and evidence provided by the applicant and the trade mark owner. The decision is then communicated to the applicant and to the trade mark owner.

9.3 Who can commence invalidation proceedings?

If the invalidity proceedings are based on absolute grounds for refusal (see section 3 above), any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, and which, under the terms of the law governing it, has the capacity to sue in its own name and to be sued, can file the invalidation proceedings. If the invalidity proceedings are based on relative grounds for refusal (see section 4 above), the proprietor of the trade mark or the person authorised under the relevant law to exercise the rights arising from a protected designation of origin or geographical indication (as applicable) can file the invalidation proceedings.

9.4 What grounds of defence can be raised to an invalidation action?

In proceedings for a declaration of invalidity based on a registered trade mark with an earlier filing date or priority date, if the proprietor of the later trade mark so requests, the proprietor of the earlier trade mark must furnish proof that, during the five-year period preceding the date of the action for a declaration of invalidity, the earlier trade mark has been put to genuine use in connection with the goods or services in respect of which it is registered and which are cited as justification for the action, or that there are proper reasons for non-use, provided that the registration process of the earlier trade mark has, at the date of the action for a declaration of invalidity, been completed for not less than five years.

9.5 What is the route of appeal from a decision of invalidity?

An appeal from the decision of the First Hall of the Civil Court may be entered before the Court of Appeal within 20 days from the date of judgment. An appeal from the decision of the Comptroller may be entered before the Court of Appeal within 15 days of service of the Comptroller's decision.

10. Trade Mark Enforcement

10.1 How and before what tribunals can a trade mark be enforced against an infringer?

Infringement proceedings may be brought via a sworn application before the First Hall of the Civil Court.

10.2 What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

A sworn application is to be completed and filed before the First Hall of the Civil Court to commence proceedings before the Court. It takes approximately three months for evidence to start to be heard from the date of filing the application, but this does fluctuate depending on the caseload of the Court.

10.3 Are (i) preliminary, and (ii) final injunctions available and if so, on what basis in each case?

Yes, both are available.

Under Maltese law, an aggrieved party may resort to precautionary measures under the EIPRA, including measures intended to:

  1. prevent any imminent infringement of the right;
  2. forbid the continuation of the alleged infringements;
  3. make such continuation subject to the lodging of guarantees to ensure compensation of the right-holder;
  4. order the seizure or delivery of the alleged infringing goods; or
  5. issue garnishee orders.

The Court may order corrective measures to be taken, at the request of the applicant and without prejudice to any damages due to the right-holder in relation to an infringement. Such measures would include recall, removal or destruction of items. On finding that an infringement of an intellectual property right has occurred, it may, on application by the plaintiff, issue an injunction against the infringer in order to prohibit the continuation of the infringement.

10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so, how?

Under the EIPRA, a right-holder may file an application in the competent Court requesting the Court to compel the opposing party possessing evidence or information to present it in Court. The Court may also order effective provisional measures to preserve evidence prior to the commencement of proceedings on the merits of the case. In cases where the Court considers that there is an evident risk of the evidence being destroyed or where a delay is likely to cause irreparable harm, such measures may be taken without the other party being heard, if the Court deems it necessary.

10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

Submissions and evidence may be submitted either in writing, by means of affidavits, or orally in camera. Witnesses may be called for cross-examination.

10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?

Yes, a Maltese Court may stay infringement proceedings until validity of the mark has been determined in another Court or intellectual property office.

10.7 After what period is a claim for trade mark infringement time-barred?

Generally, the civil action for trade mark infringement is time-barred by the lapse of five years, whereas the criminal action is time-barred by the lapse of three years.

10.8 Are there criminal liabilities for trade mark infringement?

Yes. In certain situations, criminal liability may ensue for trade mark infringement.

10.9 If so, who can pursue a criminal prosecution?

The Malta Executive Police may pursue a criminal prosecution.

10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?

Where a person makes groundless threats to another with proceedings for infringement of a registered trade mark (other than the use of the mark to goods or their packaging, the importation of such goods, or the supply of services under the mark), proceedings for relief may be sought by a sworn application before the First Hall of the Civil Court. The relief granted in such instances may consist of a declaration that the threats are unjustified, an injunction against the continuance of the threats, or damages in respect of any loss sustained due to the threats.

11. Defences to Infringement

11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?

Non-infringement grounds of defence include the following:

  1. the mark was not used as a trade mark;
  2. the mark was used in relation to goods or services that fall outside the remit covered by the registration;
  3. the marks are not similar to the extent that there is no likelihood of confusion or association;
  4. use has been made of another registered trade mark in relation to goods/services for which it is registered;
  5. use by a person of their own name or address; and
  6. use of a sign that is descriptive or indicative of characteristics of goods or services that are necessary to indicate the intended purpose of a good or service.

11.2 What grounds of defence can be raised in addition to non-infringement?

If one does not challenge the claim of infringing use, it may be possible to make use of grounds of defence, including that:

  1. the action is time-barred;
  2. the right-holder exhausted his rights by placing the products on the market or by placement with his consent;
  3. the use commenced prior to the registration; or
  4. the proprietor has acquiesced for a continuous period of five years.

12. Relief

12.1 What remedies are available for trade mark infringement?

Remedies include damages, injunctions and declarations, destruction of the infringing goods, rectification, specific performance, delivery up of infringing goods, and the disposal of infringing articles.

12.2 Are costs recoverable from the losing party and if so, how are they determined and what proportion of the costs can usually be recovered?

It is up to the discretion of the Court to determine whether one or both parties are to bear judicial expenses. Judicial costs are taxed and assessed by the registrar according to the defined taxed bill of costs.

13. Appeal

13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?

A right of appeal may be lodged before the Court of Appeal on points of fact and of law.

13.2 In what circumstances can new evidence be added at the appeal stage?

New evidence may be produced if: (i) consent was given by the opposing party; (ii) there was no knowledge thereof beforehand; (iii) the evidence was already produced but disallowed before the Court, and the appellate Court considers it relevant and admissible; or (iv) the appellate Court deems such evidence necessary.

14. Border Control Measures

14.1 Is there a mechanism for seizing or preventing the importation of infringing goods or services and if so, how quickly are such measures resolved?

Yes. The seizing of infringing goods, and prevention of the importation thereof, is carried out by the Customs authority in Malta via checks of goods that enter/transit into Malta. Such action is carried out ex officio by the Customs authority where it is prima facie evident that the imports are goods infringing an intellectual property right. In this case, Customs seize such goods and notify the right-holder regarding the infringing consignment. The right-holder is then granted five working days within which to lodge an application in Court. Failure to lodge such an application would lead to Customs releasing the suspended goods.

Furthermore, a right-holder may also directly lodge an application for action with Customs. In such instance, Customs would seize any infringing goods falling within the description thereof, as provided in the application, and notify the right-holder regarding any such seizure. Within 10 working days, the Customs authority is to be presented with evidence that judicial proceedings leading to a decision on the merits of the case have been initiated, otherwise the goods would be released.

15. Other Related Rights

15.1 To what extent are unregistered trade mark rights enforceable in your jurisdiction?

Unregistered trade mark rights may be obtained in Malta via use. Such rights are enforceable and catered for under Maltese law, specifically article 32 of the Commercial Code, Chapter 13 of the Laws of Malta, which prohibits the unlawful use of names, marks or distinctive devices that may create confusion with those that are lawfully used by others, even if such other name, mark or distinctive device has not been registered in accordance with the TA.

Article 126 of the TA makes reference to article 6bis of the Paris Convention for the Protection of Industrial Property, which entitles a well-known trade mark to protection. A proprietor of such a well-known trade mark is entitled to restrain the use in Malta of a trade mark by means of an injunction that, or the essential part of which, is identical or similar to his mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.

15.2 To what extent does a company name offer protection from use by a third party?

The Registrar of Companies in Malta does not accept names that are identical or confusingly similar to names of other companies registered in Malta or which have been reserved for registration for another company (such reservation may last up to three months).

Further protection against use by a third party may be found in unfair competition legislation found in the abovementioned article of the Commercial Code.

15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?

These rights may be protected under article 32 of the Commercial Code.

16. Domain Names

16.1 Who can own a domain name?

Any natural or legal person can own a domain name.

16.2 How is a domain name registered?

NIC (Malta) is the entity responsible for the administration of the ‘.mt' top-level domain (‘TLD'). The ‘.mt' TLD is divided into second-level domains (‘SLDs') with the aim of applying to a particular sector; for instance, ‘.com.mt' relates to the commercial sector and the prospective holder must operate on a commercial basis, whereas, if applying for an ‘.edu.mt' domain, the prospective holder must be an educational institution recognised by the Ministry of Education in Malta.

The holder, being the legal entity that will use the domain, must declare the right to use the name preceding the SLD of the proposed domain name as either a full trade mark or business name, in accordance with Maltese law. Prior to registering a domain, an individual or organisation is required to register for a ‘Handle', which will allow the person to log into the NIC (Malta) website, to register and manage domains by means according to one's role. Subsequently, a domain name registration form is to be submitted for evaluation by NIC (Malta). On acceptance of the domain name application, the domain name and contact details of the holder are entered in the ‘whois' database.

16.3 What protection does a domain name afford per se?

Malta does not have laws specifically protecting domain names.

16.4 What types of country code top-level domain names (ccTLDs) are available in your jurisdiction?

‘.mt' is the available TLD in Malta.

16.5 Are there any dispute resolution procedures for ccTLDs in your jurisdiction and if so, who is responsible for these procedures?

No. However, persons may be able to utilise the Uniform Rapid Suspension System administered by ICANN.

17. Current Developments

17.1 What have been the significant developments in relation to trade marks in the last year?

On 24 March 2023, the publication of Legal Notice 69 of 2023 brought about amendments to the Trademark Rules (Subsidiary Legislation 597.04). Most significantly, these amendments introduced the invalidation and revocation proceedings before the Comptroller, as explained in sections 8 and 9 above.

17.2 Please list three important judgments in the trade marks and brands sphere that have been issued within the last 18 months.

Banca Farmafactoring S.p.A vs The Comptroller of Industrial Property and JUD IP Limited (Inferior Appeal Number 47/2021): This case concerned an opposition lodged with the Comptroller against the registration of ‘BNF Bank' as an EUTM, on the basis of its earlier word marks ‘BFF' and ‘BFF a bank like no other', as well as its earlier figurative marks ‘BFF BANKING GROUP', ‘BFF A BANK LIKE NO OTHER' and ‘BFF ACADEMY'. The opposition was rejected by the Comptroller as it was held that the marks were not identical or similar and did not cover services that were identical or similar. The appellant appealed the Comptroller's decision before the Court of Appeal, which upheld the decision in its entirety.

Case R 405/2022-1 (First Board of Appeal of the EUIPO): In this decision, the EUIPO's First Board of Appeal annulled the EUIPO's refusal of the Bailiwick of Brandenburg of the Chivalric Order of Saint John of the Hospital at Jerusalem's application to register a mark containing the Maltese cross as an EUTM. The Board of Appeal touched upon an issue that is particular to Malta, namely the fact that Malta's national flag and merchant flag are different, and concluded that Malta's merchant flag (which bears the Maltese cross) does not represent the sovereignty of the state and therefore should not be deemed a state emblem within the meaning of article 6ter of the Paris Convention. Indeed, the Board of Appeal decided in favour of the applicant and allowed the registration of the EUTM containing the Maltese cross.

Rothmans of Pall Mall Limited vs BR International Holdings Inc. (Inferior Appeal Number 97/2022): This judgment concerned an opposition lodged with the Comptroller by the plaintiff against the defendant's application to register the word mark ‘BUSINESS ROYALS', on the basis of the plaintiff's earlier well-known mark ‘ROYALS'. This case raised the question as to whether the claim that an earlier mark is ‘well known' in terms of article 6bis of the Paris Convention can be made in respect of a trade mark that is already protected in Malta by means of registration. The Court of Appeal determined that it was irrelevant whether a ‘well-known' mark in terms of the Paris Convention is registered or not, as such marks are nonetheless protected under article 6bis of the Convention.

17.3 Are there any significant developments expected in the next year?

While no significant legal developments are expected in the near future, the new revocation and invalidity proceedings introduced in 2023 are expected to be put into practice in the coming year. It will be interesting to observe the manner in which the Comptroller handles such proceedings.

On a separate note, we have been informally informed by the Commerce Department of Malta that it is exploring the idea of introducing a platform whereby proprietors would be able to maintain a trade mark portfolio in order to easily view and track the status of their trade marks. However, there have been no updates on the development of this idea to date.

On an EU level, we note the European Parliament and Council's proposal for a regulation on geographical indication protection for craft and industrial products. Further developments on this matter are expected to shed light on the manner in which the proposed regulation will impact the interplay between trade marks and geographical indications.

17.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?

While we have not observed any specific practice or enforcement trends that have evolved in the last year, we note that opposition proceedings have been steadily on the rise since their introduction in 2021 and are expected to remain prevalent in the future.

Originally published by ICLG.

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.

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