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This
article offers basic information on some aspects of trademarks. It is
not a reference document and carries no authority. The Industrial
Property Registrations Directorate does not undertake to give legal advice
or opinion about trademarks, other than in the course of formal
proceedings – but sets out to answer some of the more basic questions.
Definition
of Trademark
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.
Implications
of Registration
When
a proprietor registers his trademark, he acquires a property right,
benefiting from specific remedies.
Application
for Registration of a Trademark
An
application for registration of a trademark must be made to the
Comptroller, who examines the application asserting whether all
requirements for registration of such application are met.
An
application for the registration of a trademark can be submitted online
at www.ips.gov.mt and should
contain the following:
- request for registration of a trademark;
- the name and address of the applicant;
- a statement of the goods or services in relation to
which it is sought to register the trademark;
- a representation of the mark;
- the name and address of the representative or attorney,
in cases where one has been appointed;
- a declaration claiming priority in cases where the
applicant wishes to take advantage of an earlier application;
- an indication that the trademark is being used by
the applicant or with his consent, in relation to those goods or
services, or that he has a bona fide intention that it should be
used;
- a statement containing the name or names of the
colour or colours being claimed in cases where the applicant wishes to
claim colour as a distinctive feature of the mark; and
- the prescribed fee.
Rights
Conferred by a Registered Trademark
The
proprietor of a registered trademark has exclusive rights in the
trademark. Such rights are infringed by such use of the trademark in
Malta when:
- the use in the course of trade is
made of a sign which is identical with or similar to the trademark in
relation to goods or services which are identical with or similar to
those for which it is registered; and there is the likelihood of confusion on
the part of the public, including the likelihood of association with the
trademark;
- the use in the course of trade is made of a sign which is identical
with or similar to a trademark in relation to goods or services which are
not similar to those for which the trademark is registered, but the
trademark has a reputation in Malta and such use takes unfair advantage of
or is detrimental to the distinctive character or the repute of the
trademark.
Classification
If
the applicant wishes to apply for a trademark in respect of different goods
and services he must make a different application for each category.
Goods and services are classified by the office according to the
International Classification of Goods and Services for the Purposes of the
Registration of Marks under the Nice Agreement. Prior to the filing
of an application, the applicant, if in doubt, should check with the office
as to how his goods and services should be classified.
If
you do not know which class (es) your goods or services are in, or you want
to check that you are using the correct class(es) for certain goods or
services, please use the new Classification search tool TMClass https://euipo.europa.eu/ec2, this
will help you to search for and classify Goods and Services (terms) needed
to apply for trademark protection.
Claim to
Priority of Convention Application
A person who has
filed an application for protection of a trademark in a country, which is a
member of the World Trade Organisation or a member of the Paris Convention
for the Protection of Industrial Property, he or his successor in title,
has the right to claim priority in registering the same trademark for any
or all of the same goods or services for which the application has been
filed. Such claim to priority is applicable for a period of six
months from the date of filing of the first application.
Absolute
Grounds for Refusal of Registration of a Trademark
Once
the formalities are fulfilled the application is then checked for
substantive requirements. A sign, which does not fall within the
definition of trademarks, shall not be registered as a trademark.
Registration
of trademark is refused if the trademark: -
- lacks distinctive character
- 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
- 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 it can be shown
that 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.
In
addition a trademark shall not be registered if it consists exclusively of:
- the shape which results from the nature of the
goods themselves; the shape of goods; and
- the shape which gives substantial value to the
goods.
Finally
a trademark shall not be registered if:
- it is contrary to public policy or morality;
- it is of such a nature as to deceive the public as
to the nature, quality or geographical origin of the goods or
services;
- its use is prohibited in Malta by any enactment or
rule of law;
- it consists of/or contains of any signs, arms,
armorial bearings on flags as listed in Article 5 of the law; and
- it is made in bad faith.
Relative
Grounds for Refusal of Registration of a Trademark
Registration
of a trademark is also refused if:
- it is identical with or similar to an earlier
trademark and the goods or services for which the trademark is applied
for are identical with or similar to the goods or services for which
the earlier trademark is protected;
- it is identical with or similar to an earlier
trademark, and although the goods or services are not similar to those
in the earlier trademark, yet the registration would take unfair
advantage of the distinctive character or repute of the earlier mark;
- its use in Malta is liable to be prevented by
virtue of any rule of law protecting an unregistered trademark or other
sign used in the course of trade or by virtue of an earlier right
An
application for a trademark shall not be refused where the proprietor of
the earlier mark or right consents to the registration of the application.
Rights
Conferred by a Registered Trademark
The
proprietor of a registered trademark has exclusive rights in the
trademark. Such rights are infringed by such use of the trademark in
Malta without the consent of the proprietor.
Appeal
Any
decision of the Comptroller may be appealed from, before the Court of
Appeal. “Decision” means any act, other than those acts that may be
prescribed by the regulations, done by the Comptroller in exercise of a
discretion vested in him.
Amendment
of an Application
An
application may be amended at a fee at the request of the applicant only by
correcting:
- the name or address of applicant
- errors of wording or of copying, or
- obvious mistakes
And
only where the corrections do not substantially affect the identity of the
trademark or extend the goods or services covered by the application.
Limitation
of Registration
The
applicant or the proprietor of a registered trademark may:
- disclaim any right to the exclusive use of any
specified element of the trademark, or
- agree that the rights conferred by the registration
are subject to a specified territorial or other limitation.
Alternatively,
the Comptroller may disclaim any right to the exclusive use of any
specified element of the trademark.
Publication
and Issuing of Certificates
When
a trademark is registered, the Comptroller publishes the registration and
issues a certificate of registration to the applicant.
Duration
and Renewal of registered trademark
The
duration of registration of a trademark is ten years, which start running
from the date of registration.
The
trademark may be renewed for further periods of ten years at the request of
the proprietor, after the payment of the renewal fee within not more than
six months before the date of expiry.
The
renewal takes effect from the expiry of the previous registration. If
the registration of a trademark is not renewed, then the Comptroller
removes the trademark from the register.
Revocation
and Surrender
The
proprietor may surrender a registered trademark in respect of some or all
of the goods or services for which the trademark is registered.
The
registration of a trademark may be revoked when: -
- within a period of five (5) years from the date of
registration the proprietor has not put the trademark to genuine use
in Malta;
- in consequence of acts or inactivity of the
proprietor, it has become the common name in the trade for a product
or service for which it is registered; or
- in consequence of the use made of it by the
proprietor or with his consent, it is liable to mislead the public in
relation to the goods or services for which it is registered,
particularly as to the nature, quality or geographical origin of those
goods or services.
Licensing
of a Registered Trademark
A
licence to use a registered trademark may be general or limited; and it may
be exclusive or non-exclusive.
The
licence is binding on a successor in title to the grantor’s interest,
unless the licence provides otherwise. Where the licence so provides,
the licensee may grant a sub-licence.
Transmission
of a Registered Trademark
A
registered trademark is transmissible by assignment, testamentary
disposition or operation of law in the same way as other personal or
moveable property.
Collective
Marks and Certification Marks
Besides trademarks
the Industrial Property Registrations Directorate also receives
applications for collective and certification marks.
A
collective mark is a mark distinguishing the goods or services of members
of an association from those of other undertakings.
A
certification mark is a mark 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.
Criminal
Offences
It
is a criminal offence for any person to make unauthorised use of a
trademark. A person guilty of such an offence shall be liable on
conviction to imprisonment for a term not exceeding three years or to a
fine of not more than €23,300 or to both such fine and imprisonment.
The
Transition from the old laws to the New Law regulating Trademarks
Proceedings
under old laws, which are pending on the commencement of the New Law, are
dealt with under the old laws.
Legislation
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