TRADEMARKS
What is a Trademark?
A trademark 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 distinguishing the goods or services of one undertaking from those of other undetakings.
How do I go about applying for a trademark?
The appropriate application form may be completed and submitted online at at
ips.gov.mt.
Are any other documents required?
If the trademark is an image then, as indicated above, a graphical representation is required along with a power of attorney wherever representatives act on behalf of the trademark owner. Other documents may also be required when filing a trademark application such as: priority certificates or regulations in the case of applications for Collective or Certification Marks.
How much does it cost?
The cost for a new trademark is €115 covering filing, registration and publication of the new trademark. The protection period for the registered trademark is of 10 years from the filing date.
How long does it take?
It will take between 3 to 5 months from date of filing to date of registration.
Does the Office conduct Relative Searches?
As part of the examination to assess whether a trade mark is capable of registration, the office will conduct a seach so as to check whether a similar or identical trade mark is already registered or applied for in Malta and in the European Union. The application will also be examined on absolute grounds of the law such as descriptiveness, public morality etc. However, once the trade mark application is submitted and following examination, the application is deemed to be not acceptable, any trade mark fees cannot be refunded. For this reason, it is always advisable to carry a search before applying for a trade mark whether there are any prior national and EU trade mark applications or registrations which are similar to your mark by using the online national trade mark register
ips.gov.mt/NR or the
TMview . Access to these databases is free of charge. You may also request that a search is carried out by the office by contacting us at
ipoffice@gov.mt for which the applicable fee will apply.
Do I have to appoint a Representative to file my trademark application?
No, it is not necessary to appoint a representative.
Are retail services protected in Malta?
Yes, retail services are one of the 45 categories of goods or services that are protected in Malta, at European level or world wide. In order to assist you in classifying your goods or services and to ensure that you include goods and services which are acceptable to the office or the EUIPO when filing an EU trade mark, it is recommended that you refer to the
TMClass tool.
PATENTS
What is a Patent?
A patent is an invention that is novel, involves an inventive step and is industrially applicable.
How do I go about applying for a patent?
The appropriate form may be completed and submitted online at
ips.gov.mt accompanied by the patent abstract, specification and claims.
Are any other documents required?
In the case where:
I. a representative has been appointed – a certified copy of the power of attorney document must also be submitted.
II. priority is being claimed – a certified copy of the priority document must also be submitted. If this is not available on application it is possible to submit the priority document within 16 months from the filing date of the earlier application (i.e. the application from which priority is being claimed)
Do I have to appoint a Representative to file my Patent application?
Applicants who do not have an ordinary residnece or a principal place of business in Malta or an EU Member state, must appoint a local representative.
How much does it cost?
The cost for the new patent is €116.47 covering filing, grant and publication of the new patent. There is an additional cost of €23.30 for every claim over the tenth claim.
How long does a patent application take?
It will take approximately eighteen months from date of filing to date of grant, given that the law stipulates that a patent cannot be published before 18 months from the date of filing.
DESIGNS
What is a Design?
Designs protect the novel appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself, and/or its ornamentation.
Do I have to appoint a Representative to file my Design application?
Only applicants who do not have an ordinary residence or a principal place of business in Malta or an EU Member state, must appoint a local representative.
How do I go about applying for a Design?
The appropriate form may be completed and submitted online at
ips.gov.mt accompanied by the drawings, sketches or diagram and a brief description of the novel features of the design.
Are any other documents required?
In the case where:
I. a representative has been appointed – a certified copy of the power of attorney document must also be submitted.
II. priority is being claimed – a certified copy of the priority document must also be submitted.
How much does it cost?
The cost for a new design is €46.59. covering the filing, registration and publication of the new design.
How long does it take?
It takes approximately 1-2 months from date of filing to date of registration.
GENERAL
Can I have a Patent , Trademark and Design for the same product/process?
Yes, a new product or service could have different intellectual property rights some of which require protection through a registration procedure. For example, if a new product involves an inventive step, then you should patent it. If this new product’s aesthetic shape is original then you should also protect its design. Moreover, the new product should also be identifiable through a unique brand name which you should therefore also protect by registering it as a trademark.
How can I obtain protection in other countries for a Trade Mark, Patent or Design?
This is possible through Malta’s accession to international rules or treaties on industrial property, including EU membership; the European Union Intellectual Property Office (EUIPO); the Paris Convention; the European Patent Convention (EPO); the Patent Cooperation Treaty; and others offering regional or international filing routes for protection of a trade mark, patent or design as applicable. More information may also be obtained directly from these supra national IP Offices of which Malta is a member at the following sites:
www.euipo.europa.eu ;
www.epo.org and
www.wipo.int .
If the 3 month period for a European Patent validation in Malta lapses, can the applicant apply for a re-establishment of these rights?
Article 7(4) of Legal Notice 99 of 2007 clearly states that failure to comply with the requirements laid down in sub-article (2) and (3) would render the European Patent void ad initio. Hence, once the right has not been established in Malta in the first place it is not possible to effect a re-establishment of such right.
Is provisional protection in Malta provided for a European Patent?
A published European patent receives the same protection as provided for a national patent application, therefore, provisional protection for a European Patent is automatically provided at no cost.
What is a Supplementary Patent Certificate (SPC) and in what cases can it be used?
A SPC grants a further term of protection (maximum 5 years) over and above the standard term of protection of 20 years for a medicinal or plant protection patent since the owners of such patents would not have been able to use the patent before receiving the necessary marketing authorisations which very often involve lengthy procedures.
How is the term of Protection of a SPC calculated?
The term of protection of a SPC is calculated as from the date of notification of the first marketing authoristation and is equal to the period which has elapsed between the filing of the patent application and grant of the first EU marketing authorisation, less five years. A SPC can be granted even if this calculation produces a negative result. However, a SPC is not usually useful unless it has a positive duration. SPCs having a negative duration are sometimes sought because EU legislation enacted in 2007, concerning paediatric medicines, provides for a six month extension of the basic SPC term in certain circumstances. This can bring a negative duration into the positive.
Redress or appeal:
Decisions of the office which are open to redress or appeal must be sent on ipoffice@gov.mt or in writing at:
Commerce Department, Industrial Property Registration
Director Industrial Property Registration
Lascaris Bastions, Daħlet Ġnien is-Sultan,
Valletta VLT 1933, Malta
Disclaimer:
Unless otherwise indicated, the information contained in this site is issued by the Industrial Property Registrations Director within the Commerce Department at The Ministry for the Economy, European Funds and Lands
Updated on:
Last updated on the 25th May 2022