MALTA Law and Practice Contributed by: Deo Falzon, Fenech & Fenech Advocates
2.3 Trade Mark Registration System A registered trade mark confers exclusive rights enforceable against third parties under the Trade- marks Act. The process starts with a trade mark appli- cation, which is examined by the IPRD for formalities and absolute and relative grounds; however, relative grounds are not raised ex officio. Once cleared on formal and absolute grounds, a trade mark applica- tion proceeds to publication for opposition for a three- month period. Third parties can oppose the trade mark application on relevant grounds during this time. In a problem-free scenario, the trade mark would proceed to registration and be entered in the register with effect from the filing date for a period of ten years, renewable indefinitely. Malta operates a single-class trade mark system and there are no discounted official fees available for multi-class applications. There are no non-use or maintenance filings required apart from the standard ten-year renewals. 2.4 Term, Use and Maintenance Trade marks are registered for a period of ten years and can be renewed indefinitely. The office does not ask for proof of use; however, trade marks can be attacked by third parties on grounds of non-use, which exceeds a consecutive period of five years. 2.5 Trade Mark Rights and Limitations Trade mark registration confers exclusive property rights to the proprietor in Malta to prevent third par- ties from using in the course of trade any infringing signs which are identical or are likely to be confused or (when the trade mark has a reputation in Malta) use without due cause which takes unfair advantage of or is detrimental to the distinctive character or repute of the trade mark and can prohibit various actions involv- ing the trade mark the most common being affixing it to goods, offering or placing on the market. There are also a number of statutory defences or limitations, however, such as the own-name defence, referential use and descriptive use. There are also limi- tations which arise due to acquiescence, where the proprietor of an earlier mark has acquiesced for 5 con- secutive years to the use of a later registered mark,
• a patent application filed with the Comptroller until after a final decision has been made by the Comp- troller to grant or refuse a patent on the application; • a patent application filed with the EPO until after the EPO has made a final decision to grant or refuse a patent on the application. 2. Trade Marks 2.1 Legal Framework and Protectable Signs The Trademarks Act, Chapter 597 of the Laws of Malta and its relevant subsidiary legislation govern the regis- tration, protection, enforcement and licensing of trade marks in Malta, transposing the Trademark Directive. Any sign that can distinguish the goods or services of one undertaking from others and is also capable of being represented on the trade mark register in a man- ner which enables the determination of the clear and precise subject matter of protection can consist of a trade mark. The law provides some non-exhaustive examples, including words, logos, letters, shapes, col- ours, sounds, patterns, position marks and motion or multimedia marks. Malta also protects unregistered signs under the law on unfair competition in the Commercial Code, Chap- ter 13 of the laws of Malta. This recognises names, marks or distinctive devices capable of creating con- fusion with any other name, mark or distinctive device lawfully used by others. 2.2 Requirements for Trade Mark Protection Trade mark protection in Malta is based on the reg- istration system, provided the trade mark is distinc- tive and does not fall within any absolute grounds for refusal. Use is not a condition for registration; how- ever, a registered trade mark becomes vulnerable to revocation for non-use if it is not put to genuine use. A trade mark can also acquire distinctiveness even if initially it is deemed non-distinctive, but there is an evidentiary threshold associated with it. Well-known marks with a reputation are also protect- able in Malta, even without registration; however, this carries a high evidentiary threshold.
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