MALTA Law and Practice Contributed by: Deo Falzon, Fenech & Fenech Advocates
5. Trade Secrets 5.1 Legal Framework and Protectable Information
pleted within a few months, after which the design is published and entered in the register. A registered design is protected for an initial term of five years from the filing date and may be renewed in successive five–year periods up to a maximum of 25 years, subject to payment of renewal fees. Late renewals are also possible within a statutory grace Industrial design infringement occurs where a third party uses a design that does not produce a differ- ent overall impression on the informed user from that of a protected registered design, including by mak- ing, offering, marketing, importing, exporting or using products incorporating the design without the proprie- tor’s consent. Civil remedies are available, including seizure, damages, destruction, as well as measures targeting counterfeit goods in transit, ie, goods not destined to be released on the Maltese market. These relate solely to designs as trade dress is not a statutorily recognised right per se; however, a remedy can still be sought through passing-off/unfair compe- tition and/or trade mark infringement. 4.5 Functionality and Technical Features Cases on design rights are rare in Malta; however, courts are expected to embrace the interpretations provided by the CJEU vis-à-vis features dictated by technical function and whether the appearance of the feature was chosen exclusively for functional reasons, such that no aesthetic freedom was available to the designer. If alternative shapes or configurations capa- ble of performing the same technical function exist, this generally indicates that the feature is not purely functional. Elements of a design can be invalidated or rejected if they are attacked on these grounds. period, failing which the design lapses. 4.4 Enforcement and Remedies
In Malta, trade secret protection is governed by the Trade Secrets Act (Chapter 589 of the Laws of Mal- ta), which transposes Directive (EU) 2016/943 on the protection of undisclosed know-how and business information. A trade secret is defined in Article 2 as information that: • is secret in the sense that it is not generally known or readily accessible within relevant professional circles; • has commercial value because it is secret; and • has been subject to reasonable steps by the lawful holder to maintain its confidentiality. This protection can cover technical information, com- mercial data, business strategies, processes, formu- las, customer lists and other confidential know-how, provided the statutory criteria are met. To establish protection (and enforce rights), the holder must dem- onstrate the existence of a trade secret, lawful control over it and (where relief is sought) that it has been unlawfully acquired, used or disclosed or that such unlawful conduct is imminent. 5.2 Reasonable Measures and Confidentiality Under the Trade Secrets Act (Chapter 589), trade secret owners must take reasonable steps, appropri- ate to the circumstances, to preserve the secrecy of the information in order to benefit from protection. In practice, this includes legal organisational and tech- nical measures such as confidentiality and non-dis- closure clauses, access controls on a need-to-know basis, internal policies and training on confidential information, segregation of sensitive data and security safeguards (physical and digital). Absolute secrecy is not required; the test is whether the measures taken are objectively reasonable given the nature, value and sensitivity of the information. Disclosure to employees or third parties does not, in itself, destroy trade secret protection, provided that the disclosure is limited, serves a legitimate busi- ness purpose and is accompanied by enforceable confidentiality obligations or duties of confidence.
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