Frequently Asked Questions

Trademarks - What is a trademark? 
A trademark is any sign capable of being reproduced graphically, and of distinguishing goods and services of one undertaking from those of another. 
 
Trademarks - How do I go about applying for a trademark? 
The appropriate application form must be completed and submitted to this office. 
 
Trademarks - Are any other documents required? 
No it is not necessary to submit any other documents. Should the Comptroller decide that the submission of any additional documents is necessary (i.e. such as power of attorney or priority documents), these should be submitted only at the specific request of the Comptroller. 
 
Trademarks - How much does it cost? 
The cost is of €116.47 This covers filing, registration and publication in the gazette. 
 
Trademarks - How long does it take? 
It will take approximately 8 months to one year from date of filing to date of registration. 
 
Trademarks - Does the office conduct relative searches? 
Yes the office will check whether a similar or identical trademark is already registered. It is on the basis of the results of a search, which the office will conduct anyway once the application has been submitted that a decision as to whether the mark is acceptable for registration or otherwise is made. However once the trademark application is submitted and this is not acceptable fees cannot be refunded. For this reason it is always advisable to request that a search is carried out before actually submitting your application. 
 
Trademarks - Do I have to appoint an attorney to file my trademark application? 
No, it is not necessary to appoint an attorney. 
 
Trademarks - Are retail services protected in Malta? 
Yes, retail services are protected in Malta. It would be necessary to use the standard wording in the specification of services on the application form as follows: ‘The bringing together for the benefit of others of a variety of goods enabling customers to conveniently view and purchase these goods in a ---- store.’ 
 
Patents - What is a Patent? 
An invention that is novel, involves an inventive step and is industrially applicable may constitute a patent. 
 
Patents - How do I go about applying for a patent? 
The appropriate form must be completed and submitted to this office accompanied by the patent abstract, specification and claims. 
 
Patents - Are any other documents required? 
In the case where:
i) an attorney 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) 
 
Patents - How much does it cost? 
The cost is of €116.47. This covers filing, grant and publication in the relevant gazette. There is an additional cost of €23.30 for every claim over the tenth claim. 
 
Patents - How long does it 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 means the 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. 
 
Designs - Do I have to have an attorney to represent me before the office? 
No, you do not have to appoint an attorney. For applicants who do not have an ordinary residence or a principal place of business in Malta (or as from the 1st May 2004 in a Member state) a local agent must be appointed. 
 
Designs - How do I go about applying for a design? 
The appropriate form must be completed and submitted to this office accompanied by the drawings, sketches or diagram and a brief description of the novel features of the design. 
 
Designs - Are any other documents required? 
In the case where:
i) an attorney 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. 
 
Designs - How much does it cost? 
The cost is of €46.59. This covers the filing, registration and publication of the design. 
 
Designs - How long does it take? 
It takes approximately 6 months from date of filing to date of registration. 
 
Designs - Do I have to have an attorney to represent me before the office? 
No, you do not have to appoint an attorney. However in the case of applicants who do not have a ordinary residence or a principal place of business in Malta (or as from the 1st May 2004 in a Member state) a local agent must be appointed. 
 
General - Can I have a Patent , Trademark and Design for the same product/process? 
Yes, this is possible. If you have an invention which is novel, involves an inventive step and is industrially applicable then you have a patent. If the final result of the process is a product with a new design or shape then you probably also can apply for a design. If you have given the product a name and you are going to market this to your clients or consumers under this new name then you also have a trademark. 
 
General - Is it possible to file a trademark, patent or design in Malta and have international protection? 
This will be possible once Malta forms part of the international treaties with regards to trademarks, which is expected to occur in the near future. In so far as patents are concerned you can use the EPC or PCT routes for regional or international filings respectively. More information on this can be found on http://www.epo.org and on http://www.wipo.int. It should also be noted that as from 1st May 2004 one can file a European Union Trademark (EU TM) which would be valid for all countries of the Community including Malta. 
 
General - What is a Supplementary Patent Certificate (SPC) and in what cases can it be used? 
An SPC grants a further term of protection (maximum 5 years) over and above the standard term of protection of 20 years. This is normally granted with regard to patents in the pharmaceutical field since the owners of the patent would not have been able to apply the patent due to the necessary marketing authorisation which very often is a lengthy procedure. 
 
Patents - With regards to European Patent validations in Malta, kindly confirm that as per Article 7(5) of Legal Notice 99 of 2007, re-establishment of Rights under Article 46 of the Patent and Designs Act 2000 shall apply. Therefore, once the 3 month period for a patent validation in Malta lapses, the applicant has the right to apply for a re-establishment of the rights under the conditions of Article 46. 
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 ab 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. 
 
Supplementary Protection Certificates - Term of Protection. How is the term of Protection of an SPC calculated? Kindly confirm whether the relevant Marketing Authorisation event is the EU marketing approval (EUMA) or Marketing approval date in Malta? 
Reference is made to Article 6(e) of LN261 of 2002 which provides that if the first marketing authority is granted by an authority outside Malta with which the Government of Malta has a reciprocal or international agreement on SPCs, it is this information that should be provided when applying for an SPC. Therefore if the EU marketing approval is the first marketing approval then the term is to be calculated from the date of such approval. Please note Article 10 of LN261 for the calculation of the term of the SPC. 
 
Supplementary Protection Certificates - Paediatric Extensions. EU Regulation 1901/2006 on Medicinal Products for Paediatric Use provides an additional 6 months paediatric extension for SPCs in all the EU member states. Further to the said regulation, kindly clarify what is the national practice in Malta, for the following: a) What is the deadline within which the patent holder must make a request for the 6 months paediatric extension? b) We understand that to get the paediatric extension, the applicant must have marketing authorisation from all the EU Member States. Apart from this, are there any procedures and formalities the applicant is required to comply with? c) Is the deadline to make a request for the 6 months paediatric extension dependent on any other event or condition to be fulfilled? d) Are there any exceptions to the 6 months paediatric extension or is it available for all SPCs relating to paediatric medicines? e) Are there any renewal implication or fee requirements at the national level for the 6 months paediatric extension? If so, please advise on the deadline to pay such fees and also the amount of fee that is required. f) If the 6 months paediatric extension is granted, will the patent holder receive a new supplementary protection certificate for the 6 months paediatric extension with new IP dates and a new patent number? g) Is it possible to get multiple paediatric extensions from a single SPC? h) We understand that the EU Regulation 1901/2006 for paediatric extension entered into force on 1 Jan 2009. Is this regulation automatically in force in Malta since 1 Jan 2009 or did it enter into force in Malta on a later date? If EU Regulation 1901/2006 for paediatric extension has not yet come into force in Malta, please clarify on what date will the regulation enter into force? 
In so far as the questions regarding the paediatric regulation are concerned, it should be noted that since this is a regulation (as opposed to a directive) this would be directly binding on MSs. Therefore one should review the said regulation in order to establish the time frames for applying for a paediatric extension and the requirements for filing such an extension. (please see Article 52(2)and (3)). Although there are no established fees for applying for such an extension, in such a situation the office would consider applying the same filing and renewal fees used for SPCs. As in all cases when a request is filed and processed by the office, the office will issue a confirmation or notification of the entry into the register but the patent number will not change. It is not possible to get multiple paediatric extensions for the same SPC. 
 
Patents - Is provisional protection in Malta provided for a European Patent? 
Article 6(2) of LN 99 confers the same protection to a published European patent application as provided for under Article 28 of the Patents and Designs Act, Cap 417 with regards to a national patent application. (see also Article 67 of the EPC). Therefore provisional protection for a European Patent is provided for. There are no fees to be paid for obtaining provisional protection.