Trade and Service Marks
– Trademarks Act XII of 2019, Chapter 597, in effect from May 14, 2019.
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Lisbon Act (Articles 1-12), Stockholm Act (except Articles 1-12), since October 20, 1967.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since March 3, 1968.
– Convention Establishing the World Intellectual Property Organization (WIPO), since December 7, 1977.
– WTO’s TRIPS Agreement, since January 1, 1995.
– European Union Trade Mark Regulation.
Definition: trademark means any sign capable of being represented graphically, and of distinguishing goods and services of one undertaking from those of another. A trademark may consist of words (including personal names), figurative elements, letters, numerals or the shape of goods or their packaging.
Absolute grounds for refusal of registration: if a mark (a) lacks distinctive character; (b) is made up entirely of signs or indications which may serve, in trade, to designate the kind, quality, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; (c) consists entirely of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade. Notwithstanding these last three exceptions, the registration of a trademark is not to be refused, if before the date of application for registration, the trademark has acquired a distinctive character as a result of the use made of it in Malta.
The following are also not registrable: signs which (d) consist exclusively of the shape which results from the nature of the goods themselves, which is necessary to obtain a technical result, or which gives substantial value to the goods; (e) are contrary to public policy or to accepted principles of morality; (f) are of such a nature as to deceive the public or likely to deceive the public as to the nature, quality or geographical origin of the goods or services or in any other manner; (g) consist of or contain the arms, or any of the principal armorial bearings of the arms appertaining to the President or the Roman Catholic Archbishop of Malta, or any insignia or device so nearly resembling such arms or any such armorial bearing as to be likely to be mistaken for it, a representation of the Presidential or Episcopal flag, a representation of the President or the Archbishop, or any imitation thereof, or words, letters or devices likely to lead persons to think that the applicant either has or recently has had Presidential or Episcopal patronage or authorization; (h) consist of a representation of the national flag of Malta, or a representation of the national flag of Malta shall not be registered if, in the latter case, it appears to the Comptroller that the use of the trademark would be misleading or grossly offensive.
Relative grounds for refusal of registration: registration of a trademark is not allowed if the mark violates the law of copyright or designs, or is in breach of any rule of law protecting an unregistered trademark or other sign used in the course of trade. Registration is refused if the mark is identical/similar to an earlier trademark and the goods or services for which the mark is applied for are identical/similar to the goods or services for which the earlier mark is protected.
Service marks: registrable.
Collective marks: are marks distinguishing the goods or services of members of an association from those of other undertakings.
Certification marks: are marks indicating that the goods or services in connection with which it is used, are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
Appellations of origin: see below.
Classification: according to the Nice International Classification divided into 45 classes. A separate application is required for each class of goods.
Priority: according to Paris Convention: six months.
Filing requirements for an application (to be sent to resident agent):
1. 1 print, not necessary for a word mark;
2. Power of attorney, notarized and legalized by Malta diplomatic or consular representative, or by Apostille;
3. Copy of priority document, if priority is claimed.
Examination: formal examination, followed by full examination.
Publication: after examination.
Opposition: possible, within sixty working days from publication.
Letters of consent: acceptable.
Rights of prior user: is provided under the Unfair Competition Law.
Duration: ten years from the date of filing.
Renewal: for further periods of ten years, to be applied for not earlier than six months before the date of expiry. Grace period: six months, with fine.
Use: compulsory. A registered mark that has not been used for a period of five years is vulnerable to cancellation on the ground of non-use.
Marking: not compulsory.
License: provided for.
Revocation: possible (a) in consequence of acts or inactivity of the proprietor; (b) if the mark has become the common name in the trade for a product or service for which it is registered; (c) in consequence of the use made of it by the proprietor or with his consent; (d) if it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
Infringement/penalties: it is a criminal offense to make unauthorized use of a trademark with view to gain for himself/herself or with the intent to cause loss to another. A person found guilty of such an offense shall be liable to imprisonment, a fine or both.
European Union Trademark (EUTM) Conversion
The filing requirements for the conversion of an EUTM into a national trademark are the same as for filing a new trademark application in Malta, with the inclusion of the following:
1. A copy of the EUTM filing details;
2. Full name and address of the proprietor of the trademark;
3. List of goods/services to be covered (in international classes 1 to 45);
4. 2 copies of the prints of the mark (where applicable);
5. Power of attorney, notarized and legalized by Malta diplomatic or consular representative, or by Apostille.
Note: priority document is not required.
Validity: EUTMs converted into Maltese national trademarks take as the applicable filing date for the national trademark either the date of the EUTM filing when the EUTM is filed after May 1, 2004 or the date of May 1, 2004 (the date of Malta’s accession to the EU) if the EUTM had been filed before May 1, 2004.
LEGAL BASIS: no specific law, however, appellations of origin can be protected under the Product Safety Act, 2001 (Act No. V of 2001) and the Geographical Indications and Designations Regulations, 2004, in force since May 1, 2004. Previously, they could also be protected as a collective or certification mark, as provided by the former Trademarks Act 2000. The new Trademarks Act mentions GIs, however, not for protection as a mark.
PROTECTION – Definitions: “Designation of origin” and “Geographical Indication” have the meaning assigned to it in Regulation (EC) No. 510/2006. Apart from Protected Designation of Origin (PDO) and Protected Geographical Indication (PGI) other schemes include: Traditional Speciality Guaranteed (TSG) and Geographic Indications in the case of spirit drinks, wine and aromatized wines.
Scope of protection: agricultural products or foodstuffs produced exclusively in the islands known as Malta or Gozo, including Comino, enjoying a proven, traditional and exceptional reputation and renown. When applying for a protection, it is the name of the product that is protected. Any operator who wishes to place the product on the market using the protected name has to go through a certification system in which it is demonstrated whether the operator is manufacturing the product according to the agreed specifications.
Examination: by the Standing Committee of the Technical Regulations Division within the Malta Competition and Consumer Affairs Authority. Following receipt of an application for registration in accordance with Regulation (EC) No. 510/2006, the Authority checks that the application is justified and publishes in the Gazette a summary of each application that will be forwarded to the European Commission.
Objection: prior to transmission of the application to the European Commission, any natural or legal person residing in Malta who can demonstrate a legitimate economic interest may submit a formal objection, in writing, to the Authority in respect of any application during the two-month period after the date of publication in the Gazette.
Duration of protection: not limited. The protection can be cancelled if a request by the organization who originally requested protection is made.
Inspection: all products produced in Malta, falling within the scope of Regulation (EC) No. 510/2006 and granted protection in terms of that Regulation, shall be subject to random inspection by the Authority.
A Register is kept by the Authority for each recognized product. Registration is compulsory for all producers of such products.